Controversial Rulings on Internet Domains

Two recent cases have a procedural aspect in common. In each case the plaintiff combined its complaint with the application for a preliminary injunction to secure his rights.

As a prerequisite for the issuing of an injunction, the applicant must show that there is a sufficient basis for its claim and a danger of impending damage which warrants immediate action, unless the claim is based on the Act against Unfair Competition. Depending on the amount of litigation, the nature of the case and the importance of the legal questions involved, injunctions may be appealed to the Supreme Court.

In Decision 4 Ob 198/00x of September 13 2000 the Austrian Supreme Court denied an injunction for the plaintiff, the Federal Republic of Austria, against an individual who had registered the domain bundesheer.at.

Bundesheer is the term provided for by law for the Federal Armed Forces. The plaintiff had previously sought to obtain an injunction to stop the individual from using the domain name bundesheer.at, establishing a homepage under the domain name bundesheer.at offering private content and transferring the domain to any third party.

The plaintiff argued that use of the term Bundesheer would violate its right to bear that name and cause confusion among people who accessed the homepage expecting to be informed about the sovereign tasks of the Federal Armed Forces. It was also argued that a loss of reputation and image to the Federal Armed Forces would be caused.

A crucial issue was the fact that the defendant's homepage made reference to the internet address of the Ministry of Defence (the governing authority of the Federal Armed Forces) with an indication that the homepage was not the official homepage of the Federal Armed Forces.

The Supreme Court made the following points:

• The term Bundesheer, although it does not refer to a natural person or legal entity, is a name protected under Section 43 of the General Civil Code as it refers to the denomination provided for by law of the Federal Armed Forces and the Federal Republic of Austria.

• The present case does not show a danger of confusion. The reference to the homepage of the Ministry of Defence and the indication that the bundesheer homepage was not an official site meant that a reasonably intelligent internet user could distinguish between the two web sites.

• No damage to reputation and image is likely to occur since internet users are aware that search engines may come up with several hits for a term. Therefore, they do not expect their first hit to be successful and will probably continue their internet search.

The second case, Decision 4 Ob 166/00s of September 13 2000, is the first to focus on the question of whether a domain registration body can be held liable for a violation of the right to bear a name according to Section 43 of the General Civil Code.

The plaintiff, the Freedom Party of Austria, which is generally abbreviated FPÖ, can be located on the Internet under its domain name fpoe.at, the Austrian letter 'ö' being spelt 'oe'. The plaintiff filed a complaint against the Austrian domain registration body, nic.at, which has registered the domain fpo.at for a US citizen. The claim was based on the grounds that the fpo.at homepage violated FPÖ's right to bear a name, was an imitation of FPÖ's homepage and contained links to right-wing organizations.

It was argued that the right-wing links might cause confusion insofar as internet users might believe that the content and political views demonstrated on the fpo.at homepage concurred with those of the FPÖ. According to plaintiff's arguments the domain registration body had allocated the domain and had not reacted to plaintiff's request to delete it although it had been informed of a potential violation of rights. Additionally, the plaintiff sought a preliminary injunction prohibiting the domain registration body to register domains violating the right to bear the name FPÖ or FPOE and requiring it to delete the registered domain fpo.at.

The Supreme Court made the following points:

• As a political party the Freedom Party of Austria has the right to bear a name. Section 43 of the General Civil Code protects the common abbreviation of a name.

• If a danger of confusion exists due to the overall impression, the typeface, the sound or content of a name, protection of that name cannot be denied because of minimal deviations in spelling. The deviation between the domains fpoe.at and fpo.at, bearing in mind that the Austrian 'ö' or 'oe' is internationally used as 'o', is irrelevant and thus does not deny protection under Section 43.

• The Austrian domain registration body handles approximately 10,000 new applications per month which are processed automatically. During the process of allocating a domain, the registration body cannot be responsible for examining whether a required domain is offensive, contrary to ethical practices or in violation of a right to bear a name.

• However, a domain registration body can become liable if - after the registration process is concluded and a domain has been registered - a party informs the registration body of a potential violation, and the violation is obvious without further investigation even to a layman. In such cases the registration body is obliged to take all necessary steps to stop the violation (eg, by blocking the domain). This matter is to be decided on a case-by-case basis.

• The plaintiff sought a preliminary injunction requiring the domain registration body to delete the registered domain fpo.at. As a matter of procedural law, a preliminary injunction may not create a irreversible situation in case the adversary prevailed in the proceedings on the merits of the case. Therefore, the application for the injunction was denied since the deleting of the domain would create an irreversible situation. Once a domain is deleted it becomes available for any third party and cannot be allocated to the former owner.

This ruling has already been criticized for placing too great a burden on the domain registration body. Critics argue that applications for domains are usually handled by non-legal personnel who cannot assess potential violations of unfair competition law or the right to bear a name. It has been suggested that the liability of the domain registration body should be limited to cases where a claim against the owner of the domain who is responsible for an offensive content of a homepage is unsuccessful, or where such owner and cannot easily be sued in Austria.

It remains to be seen whether the plaintiff will be able to prove its claim in the proceedings on the merits and if the court will hold the domain registration body liable, based on the idea that it had been informed about a violation so obvious that even a layman should have recognized it.

For further information on this topic please contact Dieter Hauck or Barbara Kurz at Preslmayr & Partners by telephone (+ 431 533 1695) or by fax (+431 535 5686) or by e-mail ([email protected] or [email protected]).