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Restriction on claim for deletion of domain registration

the l.i.n.k, 2008
1. Januar 2008

In domain disputes, the Austrian Supreme Court ("OGH") regularly refuses to grant plaintiffs a claim for the direct transfer of an infringing domain against the domain holder. Instead, the infringed party is forced to claim a deletion of the registration from the infringing party.

However, the Austrian Registry (nic.at) does not provide for any measures such as a "wait mode" to protect a claimant´s rights to the domain after the deletion of the domain occurs, but simply applies the general "first come-first served" principle for the next registration.

The deletion of the domain in dispute has, however, to be effected by defendant. Thus, the defendant determines the point in time when the domain is once again free for registration. Therefore, it is very common that a third party not involved in the proceedings is the first to take advantage of this situation and is thus able to register the domain instead of the claimant who initiated the deletion. For good reason, this is why sections of the Austrian doctrine requested that the OGH should grant the plaintiff a direct claim for the transfer of an infringing domain.

With a recent decision to the contrary, the Austrian Supreme Court ("OGH") further restricted the plaintiff´s rights: In this particular case, the defendant registered ´amade´ as a domain under the TLD.at.

However, Amadé is the trademark of one of the leading Austrian skiing regions in Salzburg. The domain holder initially used the domain for a mailing system.

This is why the first claim from the skiing resort, directed at the omission of further use of the domain, was rejected due to the lack of the likelihood of confusion of the services offered by the parties (OGH, 13.3.2002, 4 Ob 56/02t "amade I").

Since the domain holder changed the content and offered an online hotel booking system, the OGH granted Amadé´s claim for the omission of the misleading use of the domain (OGH, 14.2.2006, 4 Ob 6/06w, "amade II").

Finally, Amadé claimed for deletion of the domain registration. The OGH, however, held in its decision (OGH, 2.10.2007, 17 Ob 13/07x, "amade III"), that such claim based on the Trade Mark Act shall only be granted if the registration itself is illegal (domain-grabbing; registration of a famous trademark).

Since the defendant initially used the domain for a legal purpose (mailing system) and the plaintiff did not prove that "Amadé" was a famous trademark, the claim was finally re-jected.


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