A. Easy Cases - Hard Cases* I. Easy Case: ‘oil-of-elf.de'

In previous conflicts about domain names within the global address system, German judges only had to answer relatively simply legal questions. Under which conditions does a domain name, which is easily confused with another name, infringe the rights of the name owner? Pervious decisions have identified infringement in the following cases:

-  The name and domain name are, to a significant degree, identical or may be easily confused with one another,

-  The user of the domain name possesses no personal right to the name, and

-  The name usage is likely to promote mistakes about the origin of the web-site.

Apart from cases of identical names and of the use of generic concepts, which demanded more differentiated juridical treatment, more complex, underlying considerations have rarely played a role, since rights could only ever be asserted in very clear cases, for example, where the domain name user neither possessed a right to the domain name, nor could make a justified case for its use.

The case of ‘oil-of-elf.de' was to prove otherwise. The environmental protection organisation, Greenpeace, had published comments critical of the environmental policies of the TotalFinaElf oil company on a web-site with the domain name, ‘oil-of-oil-elf.de'. The company successfully requested an injunction from the Berlin High Court (Landgericht). The Court gave its usual grounds for the decision. The domain, ‘oil-of-elf.de', included the protected name, Elf, and so infringed upon the rights of the oil company. The Berlin Appeal Court (Kammergericht), by contrast, found for Greenpeace and lifted the injunction. The Court made it clear that consideration of the immediate questions of name theft or potential confusion about name origin, would not suffice for judgment. Instead, the primary question was one of whether, in case of political conflict, an environmental organisation would be to use a domain name incorporating targeted elements of the trademark of...