The EU General Court on the commercial use of a domain name

According to the EU General Court (“EUGC”) ruling issued on 14 May 2013 in joined cases T-321/11 and T-322/11, the mere registration of a domain name should not ground an opposition against the subsequent application for an identical Community trademark, in case the domain name is not “used in the course of trade”.

Here is the background of the case. Mr Raffaello Morelli (the “Applicant”) and the political association called “Federazione dei Liberali” (“FDL”), owners of the domain name “partitodellaliberta.it” (the “Domain Name”), filed oppositions against the subsequent applications, respectively by “Associazione Nazionale Circolo del Popolo della Libertà” and by Mrs Michela Vittoria Brambilla, for  the registration of the Community word trademark “PARTITO DELLA LIBERTA’” and of the corresponding Community figurative trademark (the “Trademarks”). In particular, the Applicant and AFL claimed the commercial and not merely local use of the Domain Name, which in their opinion entitled them to file the oppositions pursuant to Section 8(4) of Regulation 207/2009 on the Community trade mark: this provision in fact states that the existence of an unregistered prior trademark or sign other than a trademark can ground an opposition if, among other requirements, the sign is “used in the ordinary course of trade”.

The Office of Harmonization for the Internal market (“OHIM”) dismissed both oppositions taking the view that the simple registration of a domain name “was not sufficient for giving birth to the owner’s right of protection under Section 8(4) of Regulation 207/2009”. In this case, OHIM found that the Applicant and AFL provided no evidence of such use of the Domain Name considered that a) it was not clear how the mere visibility of a website could correspond to a use in the ordinary course of trade and b) the Domain Name actually referred to a fake website redirecting to the www.liberali.it website, which was the only website showing real contents.

The Applicant took the case before the EUGC, which confirmed all the findings of OHIM. In particular, according to the Court the opposing parties had to demonstrate that the Domain Name had been actually used in the context of a commercial activity “with a view to economic advantage, and not as a private matter”. In fact, “the registration of the domain name represents just a technical operation aiming only to allow its owner to use it on the internet for a given period of time”, what is not sufficient, in the EUGC’s opinion, to show the commercial use thereof, “without any concrete element proving that this is the case”.

The Court recalls several times the Anheuser-Busch ruling by the ECJ (we already talked about it here in this blog) and reminds that the required commercial use should be “sufficiently significant” and have “a geographical extent not merely local”, considering “the duration and intensity of the use of the sign as a distinctive element for its addressees”. According to the EUGC (as was for the OHIM), evidence of such circumstances was not provided by the Applicant and AFL who simply submitted newspaper articles relating to the existence of the website in issue and some screenshots of it showing irrelevant content – e.g. on the launch of a political party – and in any case subsequent to the application for the Trademarks.

In respect of the redirection from the Domain Name page to another website, according to the EUGC, said system demonstrats that the latter was actually the only operating website “because, unlike the «www.partitodellaliberta.it» website, it showed its own content”. Therefore, in this case also the redirect system shall not be considered as an evidence of the use of the Domain Name in the ordinary commercial activity.