A recent Supreme Court decision(1) concerned a domain name dispute involving the registered trade name of a company. The plaintiff's registered firm name included the word 'ProSolution'. The defendant had registered the domain name 'pro-solution.at'. Both were involved in the software/computer programming industry. The plaintiff asserted that in using part of its firm name for a domain name, the defendant had violated the Law against Unfair Competition and created a danger of confusion.

The Supreme Court granted the plaintiff's application for a preliminary injunction on the following grounds:

  • The defendant's argument that a different set of legal rules applies to internet transactions was false. A distinction between online and offline transactions should be avoided. The standards for violations of trademark and competition law apply to both types of business. No special rules are required to govern online transactions ;
  • The defendant's domain name differed from the plaintiff's firm name by a mere hyphen. Generally, the degree of similarity between two marks must be assessed on a case-by-case basis and depends on the similarity of the goods or services provided, among other things; and
  • A registered trade name (or part of it) is protected by the Law against Unfair Competition. The made-up term 'ProSolution' is sufficiently distinctive to trigger protection under the act. Due to the similarity of the goods and services provided by the parties, and the negligible distinction in spelling between the two marks, a danger of confusion did exist and the defendant had violated the plaintiff's protected firm name.

In another case(2) the Supreme Court dealt with a domain name dispute in which the plaintiff (a company with limited liability) claimed that his right to bear a name and his registered trade name 'Dullinger GmbH' had been violated. The defendant, a website designer, argued that his customer, whose name was also Dullinger but who was otherwise not a party to the conflict, had instructed him to develop, design and construct a website under the domain name 'dullinger.at'. It was agreed that the registration process would be initiated by the defendant under Dullinger's name and that registration would be transferred to the latter once the website was functioning.

While the court of first instance ruled in favour of the plaintiff, the appellate court reversed the decision and held that the defendant had not violated the plaintiff's right to bear a name since his customer, an individual bearing the name Dullinger, had permitted the defendant to act under his name. In the case of identity of names the maxim 'first come, first served' must be observed.

The Supreme Court confirmed the ruling of the appellate court and held that:

  • a violation of the right to bear a name had not occurred since the defendant's use of the Dullinger name had been authorized by his customer having that family name. Unlawful use of a name occurs only when a name is used without an original or derived right to bear it;
  • the plaintiff's argument that a danger of confusion was created was false. Since the website was merely registered and did not yet contain any content or offers of goods and services to be provided, the possibility of confusion could not be assessed;
  • the plaintiff's argument that the use of dullinger.at would lead to a dilution of his firm name must fail due to the fact that the plaintiff's company is neither famous nor sufficiently well-known; and
  • no abstract interest exists to protect access to the Internet on the basis of a company's registered trade name or its ability to be traced on the Internet. Only when a violation of the right to bear a name, firm name or mark occurs can a violated party request that the violation be stopped.

For further information on this topic please contact Dieter Hauck or Barbara Kurz at Preslmayr & Partners by telephone (+431 533 16 95) or by fax (+431 535 56 86) or by email ([email protected] or[email protected]).


(1) 4 Ob 73/01s of April 3 2001.

(2) 4 Ob 123/01v of May 29 2001.