What is the jurisdiction in internet cases

Trademark infringements on the Internet - self-regulation and its limits in cyberspace

by Victoria Kurczinski *

A. Introduction

For more than a decade, the international trade in goods and services has been using the Internet as a communication medium, which is why brand and label owners have been exposed to the challenges of label collision and Internet-specific forms of use since then. Despite the awareness of the problem area, no satisfactory solution in the form of a comprehensive adaptation of the state trademark and trademark law is emerging. Rather, national legislators seem unable to keep pace with the flexibility of cyberspace. Against this background, after an introduction to trademark law, two internet-specific uses of the mark, Keyword advertising and Domain grabbing, in order to then explain the situation from the point of view of the IZVR and IPR. Finally, using the theory of a unified Cyberlaw and two self-regulated remedial mechanisms answer the question of whether self-regulation could be the more appropriate solution for structuring the virtual space of the Internet in a legally clear manner for brand and label owners.

B. Basic principles of trademark law

I. Functions and principle of territoriality

Brands and other commercial labels fulfill specific functions in business dealings, which are value-creating for the respective owner and useful for the market participant.1 Accordingly, commercial trademark law aims to protect and guarantee them. Based on the origin function, commercial labels provide information about who the specific product or service came from.2 Furthermore, the label makes the corresponding market activities of the owner3 Statements about quality, advertises the product or service and then has both a communication and an investment function.4 In addition, trademark law is based on the fundamental principle of territoriality5 according to which the national license plate protection is limited to the respective sovereign territory.6 The functionality is only guaranteed within the protected area. The conflict-of-law form of this is the protection land principle (lex loci protectionis).7

II. Three-stage structure of trademark protection

1. National trademark protection in Germany

At the lowest level is national trademark protection, which in Germany is primarily based on the MarkenG. In the area of ​​the register mark, it implements the European trademark law directive, so that it represents uniform law throughout the Union within the mandatory requirements of the directive.8 According to the MarkenG, if the protection requirements of § 3 MarkenG are met, registration is not mandatory. In addition to register marks, usage marks, well-known marks and other marks are also protected. Central claims can be found in §§ 14, 15 MarkenG, which are either in the case of double signs and goods or. Service identity or, in the case of a so-called risk of confusion, to grant the license plate holder compensation or an injunction.

2. Supranational trademark protection within the EU

The tension between the principle of the free internal market and the territoriality principle of trademark protection, which according to Art. 36 sentence 1 TFEU was resolved in favor of the national legal monopolies9, resulted in legal harmonization via guidelines in the creation of a uniform, supranational community trademark, regulated in the GMV.10 According to the principle of coexistence, this protection stands alongside national protective regimes; collision cases are also regulated in the GMV.11 It issues a Union-wide registration mark12which, due to the fundamental synchronicity between the GMV and the trademark law directive, has corresponding requirements in terms of content, scope and limitations.13

3. The IR mark

The IR trademark, which is based on the Madrid trademark agreement and the associated protocol, is not a trademark under international law, but only a uniform registration procedure.14 In addition to specifying a national base mark that is entered in the trademark register


* The author is a student at Bucerius Law School, Hamburg.

1Campos Nave, Introduction to Trademark Law³, 2011, Rn. 6ff. as well as Rn. 9ff.

2 See, for example, ECJ GRUR 2010, 1008, 1009; ECJ, Case C-59/08 - Copad / Dior, ECR 2009, I-03421, Rn. 22; Hacker, in: Ströbele / Hacker (Ed.), Trademark Law, Commentary11, 2015, introduction, marginal number 32ff; see also recital 11 of the Trademark Directive.

3Hacker, in Ströbele / Hacker (fn. 2), inlet, marginal number 42.

4 See ECJ, case C-487/07 - L’Oréal / Bellure, ECR 2009, I-05185, Rn. 58; confirmed for example in ECJ, verb. Case C-236/08 to C-238/08 - Google and Google France, Slg. 2010, I-02417, Rn. 77; see also Long, Trademark and trademark law2, 2012, para. 18ff.

5 See, among others, BGH GRUR 2007, 884, 886.

6Müller, in: Spindler / Schuster (ed.), Law of the Electronic Media, Commentary3, 2015, 6th part, preliminary remark, III marginal 10.

7Drexl, in: MüKoBGB6, Volume 11, IntImmGR, para. 7f.

8 See. Hacker, in Ströbele / Hacker (fn. 2), inlet, marginal number 17.

9Hacker, in Ströbele / Hacker (fn. 2), introduction, marginal number 7f.

10 See also §§ 125 a ff. MarkenG.

11Campos Nave (Fn. 1), paragraph 297.

12Götting, Intellectual Property10, 2014, § 66 marginal number 6; Cherry taste, in Ströbele / Hacker (fn. 2), § 3 marginal number 1.

13Götting (Footnote 12), Section 66 marginal number 12; Campos Nave (Fn. 1), paragraph 296.

14Campos Nave (Footnote 1), paragraph 447; Fezer, in: Trademark Law, Comment4, 2009, Int MarkenR Rn. 4.

Kurczinski, Trademark Law (BLJ 2015, 2) 59

registered with WIPO15, a bundle of other treaty states can be specified in which WIPO will then register.16 The respective national protection regime remains decisive for the eligibility for protection. However, there is no uniform international trademark law.17 International agreements such as the PVü and TRIPS in particular only lead to isolated harmonization and relief.18 In this respect, trademark law worldwide continues to be permeated by the principle of territoriality.

C. Problem: trademark protection in

Cyberspace

I. Ubiquity instead of territoriality

The Internet is a technical, internationally standardized system, the content of which can be accessed by anyone. Different languages ​​as well as the systematization of geographic top level domains (ccTLDs)19 only actually lead to a certain territorialization of the access to web content.20 The dominant principles are therefore ubiquity and virtuality.21 This basic concept is in direct conflict with the principle of territoriality.22 The protected areas, which could mostly exist side by side in the real world due to the limited business traffic, collide with one another on the Internet. This results in functional protection problems for both the IZVR and the IPR in the event of cross-border infringement of license plates. In addition, the virtual representation leads to Internet-specific forms of use that also require classification on a material level. As an example, this should be Keyword advertising and Domain grabbing before the other problems.

II. Internet-specific forms of use

1. Keyword advertising

a) manifestations

The so-called Keyword advertising, known on Google as Google AdWords, keywords are booked with a search engine operator for a fee so that the website of the respective company appears as a "sponsored link" or as an "ad" when the word is entered in the search engine mask.23 A distinction must be made between this and the special form of Keyword buying, with which a place in the regular hit list is bought via a keyword.24Keyword advertising represents the further developed form of the Meta tagging represent. Meta tags are keywords in the invisible source text of a website, which are used by search engines that still consider this meta-level in their search,25 and then sort this website to a higher position in the list based on the hit.26 This practice becomes relevant in terms of trademark law if the keywords booked are protected commercial trademarks of a third-party company.27 The booked keyword can appear in the results display in the advertising banner of the website of the non-owner, but booking is also possible as Keyword without explicitly listing the identifier.28 For the first variant of the visible Keyword advertising there are no differences to a use under trademark law on a website, so that claims from §§ 14, 15 MarkenG come into consideration,29 However, the legal classification of the invisible appears problematic Keyword advertising.

b) Classification of invisible keyword advertising

aa) Equality with meta tags

As well as Meta tags are the booked Keywords for the respective Internet user only in the form of his own entry in the search mask, but not visible in the search result. Invisible Keyword advertising and Meta tags also pursue the same goal of increased awareness by the Internet user and could be legally equated.30 For Meta tags the factuality of a trademark infringement was controversial for a long time due to the lack of immediate perceptibility.31 In particular with regard to the trust, quality and advertising functions that are also protected in addition to the origin function, the unwritten requirement of trademark use is now widely understood here32so that indirect risk of confusion is affirmed33 and thus a claim for damages from §§ 14, 15 MarkenG is awarded.34

bb) Limiting jurisprudence

The ECJ had to come across that several times Keyword advertising decide and restricted the requirements for the existence of a trademark infringement.35 First of all, the function of origin must also be violated; an impairment of the other functions of a brand is not sufficient.36 According to the ECJ, it is possible that Keyword advertising constitutes such a violation if the traffic has no knowledge of the missing connection between the advertiser and the trademark owner, but such a connection is suggested or the design of the advert placed is difficult or impossible to identify,


15Campos Nave (Fn. 1), paragraph 462.

16Campos Nave (Footnote 1), paragraph 449f; Fezer (Fn. 14), Int MarkenR marginal no. 4.

17Müller, in: Spindler / Schuster (fn. 6), part 6, preliminary remark, III marginal number 9.

18Sosnitza, German and European trademark law, 2010, § 1 marginal number 10; Fezer (Fn. 14), Int MarkenR marginal number 2f. and Rn. 17ff.

19 See on the term Over, Trademark law on the Internet, 2002, p. 37.

20 See also Heinze, EuZW 2011, pp. 947, 948.

21 See. Schack, MMR 2000, p. 135; Over (Fn. 19), p. 29.

22Over (Fn. 19), 29.

23Müller, in: Spindler / Schuster (fn. 6), § 14 marginal number 141.

24Habermeier, in: Martinek / Semler / Habermeier / Flohr (eds.), Handbuch des Vertriebsrechts3, 2010, § 42 marginal number 50; Nice Keyword Advertising and Keyword Buying, 2006, p.142.

25 S. Müller, in: Spindler / Schuster (fn. 6), § 14 marginal number 137.

26Merchant, MMR 2005, p. 348; Müller, in: Spindler / Schuster (fn. 6), § 14 marginal number 137.

27Nice (Fn. 24), p. 139.

28Nice (Fn. 24), p. 55.

29Nice (Fn. 24), p. 153.

30 See, for example, OLG Dresden, K&R 2007, 269, 270; OLG Munich, MMR 2008, 334, 335; Müller, in: Spindler / Schuster (fn. 6), § 14 marginal number 142.

31Hacker, in Ströbele / Hacker (fn. 2), § 14 marginal number 222; see also Rath, The Law of the Internet Search Engines, pp.162-173.

32Rath (Fn. 31), pp 168-170.

33Müller, in: Spindler / Schuster (fn. 6), § 14 marginal number 138.

34 See in particular BGH GRUR 2007, 65,66.

35Hacker, in: Ströbele / Hacker (fn. 2), § 14 Rn. 230ff.

36 See ECJ, - Google and Google France, (Footnote 4), para. 82ff; Müller, in: Spindler / Schuster (fn. 6), § 14 marginal number 145.

Kurczinski, Trademark Law (BLJ 2015, 2) 60

from which party the goods or services originate.37 Apparently the ECJ opened the gate to the invisible Keyword advertising, so affirmed court decisions from Austria38 and France39 subsequent violations of the function of origin.40 The BGH, on the other hand, only considers the infringement to be fulfilled if the advertisement in the search engine is not marked as such (thus probably Keyword buying) and this contains an explicit reference to the foreign license plate.41 That leads to the invisible Keyword advertising in Germany to no trademark claims42which could be incompatible with the ECJ.43

2. Domain grabbing

a) The domain can be protected under trademark law

A domain is primarily one that can be assigned once44 physical network address within the worldwide administrative domain name system (DNS) of the Internet45 and not automatically a commercial label. In order to obtain such an address, a registration contract must be concluded with the responsible registration office (in the case of a registration in the area of ​​the country code top level domain [ccTLD] "€ ž.de", it would be DENIC eG), whereby only a relative contractual right is justified. However, if the domain, in addition to its address function, fulfills a trademark-related acquisition of the MarkenG, it can be protected or registered under trademark law.46 In addition, goods and services that are sold on the Internet under a certain domain name are identified by this at least indirectly with regard to their operational origin.47

b) Definition of domain grabbing

The dual role of a domain as a one-time assignable address according to the priority principle48 in the worldwide web and as a multiple protection label depending on the territory49 leads to a registration race in which unauthorized persons often get involved in order to profit from the intensified competition. This registration practice, which mostly involves bundles of many well-known domain names and the goal of either making a direct profit from the well-known domain or indirectly through an overpriced sale to the real owner, is called Domain grabbing or as Cybersquatting designated.50

c) Law Enforcement

aa) gTLDs and foreign ccTLDs

If the domain that violates the trademark is a foreign ccTLD or a generic top level domain (gTLD) such as "€ ž.com", there are procedural and conflict of law problems when bringing trademark infringements before German courts.51 Even if German courts have jurisdiction and German law is applicable, the principle of territoriality means that the tenor of the judgment is mostly limited to the German legal area52 and is therefore unsatisfactory for the area covered by foreign ccTLD or gTLD. A comprehensive prohibition law cannot be enforced in this way.53

bb) The ccTLD "€ ž.de"

Although the same procedural and conflict-of-law delimitation difficulties do not arise for the claims under the German ccTLD "€ ž.de", enforcement of the law when registering a domain by a non-owner is problematic on a material level. The use of the trademark law required for a claim under § 14 or § 15 MarkenG is not accepted when registering with DENIC,54 so that a first-time access risk and thus a sufficiently specific sign of a trademark infringement must be shown. As a rule, however, a non-infringing use cannot be completely ruled out, so that the claim will not exist.55 In addition, DENIC is actually only liable for interference if it has been presented with a legally binding legal title against the domain owner.56 As a result, legal enforcement of trademark claims is only promising if the non-owner uses the trademark.

III. International jurisdiction of the courts

Even with the international jurisdiction of the courts, there are difficulties in classifying trademark infringements on the Internet. First of all, according to Art. 4 I Brussels Ia-VO in conjunction with Art. 62, 63 Brussels Ia-VO for actions the general place of jurisdiction of the defendant's residence. In addition, there are the alternative tortious elective jurisdiction of the place of action or success57 according to Art. 7 No. 2 Brussels Ia-VO into consideration.


37 See ECJ - Google and Google France, (Fn. 4), para. 82ff.

38 See, for example, ÖsterrOGH öBl 2011, 29, 31f.

39 See, for example, Cour de Cassation GRUR Int 2011, 446, 447.

40Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 233.

41 See BGH GRUR 2013, 290, 293.

42 For concession to exceptions, see BGH GRUR 2014, 182, 183.

43 S. also Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 235.

44Buck-Heeb / Dieckmann Self-regulation in private law, 2010, p. 188.

45Bettinger, Handbook of Domain Law, 2008, Part 1 Rn. 4ff.

46 See BVerfG NJW 2005, 589; Bettinger, (Footnote 45), part 2, marginal DE 108; Holes, The domain as a name and identifier, 2010, p. 25; Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 219.

47Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 219.

48Bettinger (Fn. 45), part 1, para. 114.

49Bettinger, GRUR Int. 1997, 402.

50Over (Footnote 19), p. 118; Micklitz / Schirmbacher, in: Spindler / Schuster (fn. 6), § 4 UWG marginal number 284.

51 S. also Renck, in: Kilian / Heussen (Ed.), Computer Law Handbook26th tbsp, 2008, Rn. 15ff.

52Renck, in: Kilian / Heussen (fn. 51), marginal number 18.

53Renck, in: Kilian / Heussen (fn. 51), marginal number 18f.

54 See BGH GRUR 2008, 912, 913; GRUR 2009, 484, 489; GRUR 2009, 685, 689; Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 218.

55 See OLG Karlsruhe Mitt 2002, 144; Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 218.

56 See BGH GRUR 2001, 1038, 1040; Hacker, in: Ströbele / Hacker (fn. 2), § 14 marginal number 404.

57 See ECJ, case C-21/76 - Handelskwekerij Bier / Mines de Potasse d’Alsace1976 ECR 01735.

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1. Place of action

The place of the causal event is regarded as the connectable place of action within the framework of Art. 7 No. 2 Brussels Ia-VO.58 In order to avoid referring to the substantive facts according to the determination of the applicable law (qualification lay causae) this is measured according to the factual action.59 In spite of this principle, one could alternatively switch to the seat of the person who uploads the corresponding content to the server or the location of the server in Internet cases.60 With regard to legal security and predictability, it must be noted that the difficult determination of the server location is often influenced by technical coincidences. For this reason, the European Court of Justice has also spoken out in favor of the link via the seat of the advertiser and thus the place of uploading.61 As a result, the place of jurisdiction of the place of action usually coincides with the general place of jurisdiction of the defendant and Art. 7 No. 2 Brussels Ia Regulation is not relevant in the absence of an “other” place of jurisdiction.62

2. Place of success

a) Successful injury in the protected country

Art. 7 No. 2 Brussels Ia Regulation also includes the place where the primary damage occurred as a possible connection point.63 It depends on the sphere of activity of the injury, which raises problems with regard to Internet constellations. It might be sufficient that one website is available, as could one in view of the multitude of jurisdictions resulting from this worldwide64 demand a restriction on a sufficiently economically relevant domestic connection65 or a classification via the respective ccTLD66 make.According to the ECJ, the place of success can only be a place within the respective protected country of the label.67 With regard to the proximity of the evidence and the factual relevance, it has been shown that this transfer of the principle of protection to the criminal jurisdiction of the place of success is to be welcomed. A restriction on the procedural level, as it is seen by some in the BGH case law with regard to the sufficiently economically relevant domestic reference,68 would ultimately be an anticipation of a substantive and legal examination and would not bring any added value in terms of predictability and relevance compared to the protected land principle, since it would involve a detailed collection and examination of evidence. The reference to the respective ccTLD fails to recognize the lack of possibility of standardizing the principle with regard to gTLDs and the high susceptibility to abuse of the feature.69

b) cognitive authority

According to the ECJ developed Shevilldoctrine70 the plaintiff at the place of jurisdiction of the place of success can only assert the damage incurred in the state of the court seised.71 After a softening of this principle and the recognition of full cognitive authority in the area of ​​personal rights violations at the newly opened place of jurisdiction of the plaintiff's center of interest72 it was disputed whether this extension should not also apply to industrial property rights,73 however, the ECJ has since opposed this transferability.74 With regard to factual and evidence proximity, the maintenance of the limited cognitive power on the basis of the nationally protected trademarks seems obvious.75

IV. International trademark law

The law applicable to commercial trademark infringements is basically determined in accordance with Art. 8 I Rome II-VO. According to this, the law of the state for which protection is claimed in the specific case is to be applied. The protected land principle codified in this way dominates national and international conflict of laws intellectual property law.76 Also covered by Art. 8 Rome II-VO are multistate usage actions on the Internet, which results in the so-called mosaic view.77 In principle, the respective national legal system on whose national territory an infringement or use of the act is objected to is applicable, which also applies to indivisible cross-border acts.78 In some cases, a content-related restriction of the principle is required, according to which the place of the actual infringement is to be used at the conflict of law level.79 The wording of the standard, however, is only based on the law of the state, “€ ž is claimed for protection”; a comparison with Art. 8 II Rome II Regulation also shows that this does not necessarily mean the place of infringement.80 Ultimately, Art. 8 Rome II Regulation is more than a mere specification of the place of success rule


58McGuire, ZEuP 2014, pp. 160, 165; crit.Cure, GRUR Int. 2014, pp. 749, 752.

59 See ECJ, case C-228/11 - Melzer / MF Global, CELEX ID: 62011CJ0228, para. 35; McGuire, ZEuP 2014, pp. 160, 165.

60McGuire, ZEuP 2014, pp. 160, 165.

61 See ECJ ZEuP 2014, pp. 155, 159; McGuire, ZEuP 2014, pp. 160, 165.

62McGuire, ZEuP 2014, pp. 160, 167.

63McGuire, ZEuP 2014, pp. 160, 164; ECJ, - Handelskwekerij Bier / Mines de Potasse d’Alsace, (Fn. 57).

64 S. Lehmann / Stieper, JZ 2012, pp. 1016, 1019.

65 See BGH GRUR 2012, 621.

66 So OGH May 29, 2011 - 4 Ob 110/01.

67McGuire, ZEuP 2014, pp. 160, 167.

68 See BGH GRUR 2005, 431, 433.

69McGuire, ZEuP 2014, pp. 160, 162.

70 Term after McGuire, ZEuP 2014, pp. 160, 169.

71 See ECJ, case C-68/93 - Shevill et al / Press Alliance1995 ECR I-00415.

72 See ECJ, verb. Case C-509/09 and C-161/10 - eDate Advertising and others, 2011 ECR I-10269; Duty, GRUR Int. 2013, pp. 19, 21.

73 See to the controversy Heinze, EuZW 2011, pp. 947, 950; Spindler, AfP 2012, pp. 114, 118.

74 See ECJ ZEuP 2014, 155, 157f.

75 So too Lehmann / Stieper, JZ 2012, pp. 1016, 1019.

76Drexl, in: MüKoBGB (Fn. 7), Rn. 6; Unberath / Cziupka, in: Rauscher (Hrsg.), European Civil Procedure and Conflict of Laws, Commentary, 2011, Art. 8 Rome II-VO Rn. 19.

77 See ECJ, - Shevill et al / Presse Alliance, (Fn. 71); McGuire, ZEuP 2014, pp. 160, 162; Bag, WRP 2008, pp. 1405, 1414; Thorn, in: Palandt74, 2015, Art. 8 Rome II Regulation, Rn. 7.

78Bag, WRP 2008, pp. 1405, 1414; ders., WRP 2000, pp. 269, 274.

79Unberath / Cziupka, in: Rauscher (fn. 76), Art. 8 Rome II-VO Rn. 20ff; for UrhR Weller, ZEuP 2008, pp. 252, 279-282.

80Bag, WRP 2008, pp. 1405, 1410f; Unberath / Cziupka, in: Rauscher (fn. 76), Art. 8 Rome II-VO Rn. 21.

Kurczinski, Trademark Law (BLJ 2015, 2) 62

according to Art. 4 Rome II-VO, so that the problem can be shifted to the level of substantive law.81

D. Self-Regulation: Role and Realizable Form in Cyberspace

The above explanations make it clear that state law, whether material, conflict of law or procedural law, comes up against challenges in the case of cross-border license plate infringements on the Internet. For this reason, it must now be discussed whether self-regulation could be the adequate legal means for this ubiquitous area.

I. Approaches to definition

Formulating self-regulation uniformly and precisely at the same time fails due to the variety of manifestations and the various dogmatic fields of discussion.82 In short, the term can be understood as the autonomous or heteronomous setting up, application and enforcement of rules, in which at least private individuals are also acting actors.83 In contrast to autonomous self-regulation (private autonomy84) can be traced back to a state validity order85 and thus represents an intermediate stage to state law.86

II. Utopia: uniform cyberlaw

Particularly at the beginning of the new millennium, the necessity and possibility of an independent global legal order for the Internet was discussed due to the lower connection to place, time and physicality of the new medium.87 Even if self-regulation was seen as a promising instrument for closed groups,88 Over time it became apparent that pure self-regulation would not be satisfactory for the open network due to the heterogeneous interests.89 The economically strongest interests would prevail, minority and individual interests would not be adequately represented.90 Even if it came to a catalog of rules in line with interests, a general legal binding would be problematic in the absence of a state application order, since a contract is necessary for binding in the area of ​​self-regulation.91 Ultimately, government tasks are also performed on the Internet,92 so that increasingly regulatory competition with complementary combinations of state and self-regulated law was proposed.93

III. Google's self-regulatory approaches

Google, a gatekeeper on the internet,94 led against the backdrop of AdWords-Problem with invisible Keyword Use the option of a trademark complaint, which can now prevent the placement of advertisements on the trademarks of the trademark owner.95 As a self-regulated instrument, this complaint can be seen as outside the law flowing from the legal trademark, which then interferes with the legal positions of the customers of AdWords may exist.96 So it was possible to successfully appeal to unfair competitor obstruction according to § 4 No. 10 UWG before the OLG Cologne,97 which is the only decision in this direction so far.98

IV. UDRP of ICANN

The private Internet Corporation for Assigned Names and Numbers (ICANN) manages the global Internet addressing system (Domain Name System [DNS]) and thus has a monopoly on accessibility on the Internet.99 Despite its private nature, the US Department of Commerce exerts considerable influence with its oversight function,100 so it is a form of regulated self-regulation. Each domain must be registered with ICANN via a contractual chain, which enabled the organization to establish a Uniform Domain Name Resolution Policy (UDRP), which provides an alternative dispute settlement procedure for brand and label owners,101 to introduce. The establishment of the policy takes place via the obligation of the registration authorities for gTLDs to the ICANN,102 that the UDRP is to be integrated into the registration agreements with the individual domain registrants.103 This means that only gTLDs are recorded, but the national issuing offices of ccTLDs can voluntarily make the UDRP binding in their registration regulations.104 The dispute settlement procedure opens up an alternative to state jurisdiction for the right holder, but in the absence of a voluntary agreement of the policy, the arbitration boards are not arbitration courts within the meaning of Section 1055 ZPO.105


81Unberath / Cziupka, in: Rauscher (fn. 76), Art. 8 Rome II-VO Rn. 21; Bag, WRP 2008, pp. 1405, 1411-1414; Drexl, in: MüKoBGB (Fn. 7), Rn. 12; Thorn, in: Palandt (fn. 77), Art. 8 Rome II Regulation, Rn. 7.

82 S. also Buck-Heeb / Dieckmann (Fn. 44), p. 12 f.

83Buck-Heeb / Dieckmann (Fn. 44), p. 24.

84Long hard, Framework Law and Self-Regulation, 1993, p. 88.

85Becker, Cooperative and consensual structures in standard setting, 2005, p. 81; Buck-Heeb / Dieckmann (Footnote 44), p. 35; Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 812.

86Buck-Heeb / Dieckmann (Fn. 44), p. 36.

87Rossnagel, MMR 2002, p. 67f; see also Mayer, NJW 1996, p. 1782ff; Christiansen, MMR 2000, p. 123; Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 811f.

88 See among others Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 812; Christiansen, MMR 2000, 123, pp. 125f.

89Rossnagel, MMR 2002, pp. 67, 69.

90Christiansen, MMR 2000, pp. 123, 126; Rossnagel, MMR 2002, pp. 67, 69.

91Christiansen, MMR 2000, pp. 123, 125.

92Rossnagel, MMR 2002, pp. 67, 69.

93Christiansen, MMR 2000, 123, 129.

94 Term after Rath, (Fn. 31), p.25.

95Müller, in: Spindler / Schuster (footnote 6), § 14 MarkenG marginal number 151.

96 See.OLG Cologne, GRUR-RR 2011, 98, 99.

97 See OLG Cologne, GRUR-RR 2011, 98; crit.Chicken, GRUR-Prax 2012, p. 369.

98Chicken, GRUR-Prax 2012, pp. 369, 371.

99Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 809; Buck-Heeb / Dieckmann, (Footnote 44), p. 187.

100Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 811.

101Buck-Heeb / Dieckmann (Footnote 44), p. 193; Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 813.

102Bettinger (Fn. 45), part 3, para. 26.

103Buck-Heeb / Dieckmann (Footnote 44), p. 194; Ahlert, Worldwide elections on the Internet, 2003, p. 187.

104Bettinger (Fn. 45), part 3, para. 35f.

105Buck-Heeb / Dieckmann (Fn. 44), p. 194.

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1. The procedure

If a right holder requests a procedure according to the UDRP, he or she is directed to one of the five106 ICANN accredited Dispute Resolution Providerwho handle the administrative handling of the procedure in their respective Supplemental Rules for Uniform Domain Name Dispute Resolution Policy have differentiated.107 After the complaint has been formally duly submitted and the respondent has replied to the complaint, the respective center convenes a panel made up of experts in international trademark law, who usually have to decide on the complaint within 14 days.108 A transfer or deletion claim for one or more domains can be asserted (cf. § 3 UDRP rules),109 materially only the violation of the bad faith domain registration is covered (see § 4 letter a UDRP).110

2. Advantages

Conceived as an instrument for the quick settlement of clear domain piracy cases111 and with a duration of a maximum of 45 days,112 the procedure according to the UDRP brings a clear time advantage for the right holder compared to the state jurisdiction. Although the complainant always has to pay for the procedural costs, these are relatively low compared to state court costs.113 There is also an immediately enforceable policy according to the policy114 Transfer claim in the event of bad faith registration of the domain, which is foreign to German law, for example.115 Due to the direct enforceability, the state courts are ultimately relieved.116

3. Problems

On the other hand, in the absence of an internal UDRP appeal, case law cannot develop,117 In addition, contradicting decisions are made by different panels, both when comparing different ones Dispute Resolution Provider as well as within a Dispute Resolution Providers.118 The voluntary nature of submission in the area of ​​ccTLDs enables registration authorities such as DENIC to deny domain owners a procedure according to the UDRP.119 The choice of place of jurisdiction for the complainant as provided for in Section 3 b xiii UDRP Rules can also be fatal.120 In addition to problems with the courts' recognition of this choice of place of jurisdiction and the rejection of the UDRP as the applicable law, in one case before the KG Berlin the non-existence of a transfer claim was affirmed in the context of a negative declaratory action by the respondent.121 Another point of criticism is the possibility of a fiduciary registration122 which raises hurdles for complainants with regard to the language of the proceedings, the correct respondent and the predictability of the proceedings.123

4. Extension of the UDRP

An expansion of the UDRP is basically conceivable, but the task of ICANN is limited to the administration of the DNS. Submitting infringements of website content to the UDRP would represent an overstepping of competencies on your part and would also fail due to the lack of comparable insight into the domain register. In addition, it is questionable whether one would like to entrust the ICANN with a content control. Despite its structure in which national states are only im General Advisory Committee and are not allowed to participate in the highest organ,124 largely shaped by the influence of the USA.

E. Conclusion

Against the background of the above, it becomes apparent to what extent an interaction between state regulatory claims and self-regulation can function and be expanded. The predominant role of national and in parts Europe-wide law is not abolished in the ubiquitous Internet, but it is diminished. The reaction from Google underscores the advantages of the flexible private autonomous regulation, which can be used for cases of the Keyword advertising represents a relief for trademark and trademark owners with regard to legal enforcement. Despite the optimization potential listed above, the UDRP acts as a showcase for global self-regulation. To conclude from this that there is extensive potential for self-regulation in relation to other Internet actors would be a fallacy. ICANN is in fact the only organization that has such a monopoly on the Internet, so that increased self-regulation in relation to the entire Internet would only be possible through ICANN's competence expansion, which is to be rejected for the reasons listed above. In order to enable sufficient protection and satisfactory legal prosecution for brand and label owners within the Internet, in addition to expanding the UDRP to include the German ccTLD "€ ž.de", legal standardization with the help of WIPO and associated international agreements can be promoted. Above all, the aim could be to develop a supranational brand from the IR brand based on the model of the European community brand. However, with regard to trademark and trademark law, states will not give up their right to regulate simply because the Internet is a medium with a previously unpredictable influence. Such a giving up would also be a mistake in terms of the utopian notions of a uniform cyberlaw.


106 Available at https://www.icann.org/resources/pages/providers-6d-2012-02-25-en, last accessed on November 22, 2015.

107Bettinger (Fn. 45), part 3, para. 65.

108Bettinger (Fn. 45), part 3, para. 77ff. and marginal number 87; see also § 15 UDRP-Rules.

109 not identical to the UDRP.

110Bettinger (Fn. 45), part 3, para. 194.

111Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 813; Bettinger (Fn. 45), part 3, para. 194.

112Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 813.

113 See the list of costs in Bettinger (Fn. 45), part 3, para. 160.

114Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 813.

115 See also Melting, GRUR-Prax 2012, p. 127.

116Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 813.

117 See also Bettinger (Fn. 45), part 3, para. 162; Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 814.

118Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 814 (and fn. 56, 57 there).

119 See. Bettinger (Fn. 45), part 3, para. 38.

120Melting, GRUR-Prax 2012, pp. 127, 129.

121Melting, GRUR-Prax 2012, pp. 127, 128.

122 Registration of a domain in the name of a third party without its identity being revealed, cf. Körber / man, GRUR Int. 2014, pp. 775, 777.

123Körber / man, GRUR Int. 2014, pp. 775, 776.

124Voegeli-Wenzl, GRUR Int. 2007, pp. 807, 811.