A German Appellate court has ruled that World Media Group LLC (World.com) which owns the domain name Berlin.com has to cease using the domain name in connection with a website providing information on Berlin because such use constitutes an infringement of the rights of the state Berlin in the name under Sec. 12 of the German Civil Code.
The domain name Berlin.com was registered on June 23rd, 1995
Today due to the ruling, there is a disclaimer on the very top each website stating that the website is not affiliated with the state of Berlin.
Furthermore, as the court ordered there are no advertising links on the website.
You can see the difference on the site by checking out screenshots.com/berlin.com/2011-04-04 which was prior to the lower court ruling to the one from after the lower court ruling which you can see here.
Back in 2008 the domain name was a simple parked page with links which you can see here
The lower court had imposed an Administrative fine of up to 250,000 euros, or alternatively administrative detention, or arrest up to six Months in the event the domain name owner did not change the site for each infraction.
It seems the court ordered the domain owner to pay a fine of $150,000,00 euros and the costs of the litigation.
One interesting fact in the ruling was the amount of traffic Berlin.com gets compared to Berlin.de (.de is the country code CCTLD for Germany)
“The number of visits to Berlin.com current 4,740-8,310 per month, and corresponds roughly in Average figures from 2007, while the side will berlin.de visited monthly by 6,294,575 users,
Based on those numbers the court actually found that Berlin.com does not offer a high level of awareness.
It also counters the agruement that so many domainer make that branding a domain name off anything but a .com is going to mean there is going to be tremendous traffic loss to the .com
That does not seem to be the case with Berlin.de and Berlin.com.
We used Google to translate the decision which was of course in German.
The court found that Berlin was not a generic word but was the name of the state of Berlin.
The court found that The range of information a domestic city under the domain name “berlin.com” is aimed, in particular when under the domain – as here – German language content are maintained, intended also to German Internet users. Berlin.com” is sufficient this for the adoption of an allocation of confusion, without the understanding of transport- foreign Internet users arrive.
The confusion over the identity of the operator of www.berlin.com page may not be considered in particularly serious when it is eliminated by the website that opens again quickly so that in these cases, an unauthorized usurpation name implies that this legitimate interest name of the carrier is affected in particular.
The rapid removal of the assignment of confusion after the opening of the site can be here in the design of the website under “berlin.com”
For one, the Internet user has the mistaken idea about the identity of the site owner in doubt formed even before the call to the page. On the other hand, the internet user to be only for the the side information held and links around the city of Berlin, hotel and travel deals, etc. interested, regularly no reason to bring up the Contacts page.
The use of a name is unauthorized if the user does not own rights to the name and he can not claim the rights of a third party to rights of third parties, which could lead the defendant here, are not apparent.
In a dispute over a domain name can indeed be not only based on whether the do-main a domestic owner’s name or trademark right exists. For generic top-level Domains like. “Com” to a name and trademark law, even if it’s not in Germany, but is in another state, to the fact that the domain owner is generally regarded as justified.
It has passed the danger that an average consumer, sensible and appropriate to the situation observant visitors to the site keeps the website of the defendant for the plaintiff. The home page can be seen at first glance that it lays hold information and assistance are intended primarily for Berlin visitors and tourists.
It is taken into account in the balancing of interests that the prohibition is narrowly confined and the defendant does not prevent the domain “berlin.com” for the intended purpose in their “World Travel Media Network of sites to use “and then information from the field of tourism and To spread tourism with regard to Berlin, when this happens on a way that a Confusion with the plaintiff exclude.
Hat Tip: Peter Müller, IP attorney