An Austrian company exploited a loophole in EurID’s .eu sunrise period to register dozens of generic .eu domain names, according to the European Court of Justice.
An outfit by the name of Internetportal und Marketing GmbH noticed back in 2005 that European Union regulations covering the .eu launch said that trademarks containing “special characters” could be claimed under the .eu sunrise.
If your trademark contained characters not compatible with normal DNS, such as $ or #, you could ignore those characters when you applied for your trademark as a .eu sunrise period domain.
So, with ingenuity I have to grudgingly admire, Internetportal registered 33 trademarks in Sweden that comprised generic dictionary terms interspersed with those special characters.
By applying under the sunrise period, rather than during the landrush or open registration periods, the company could eliminate most of its competitors for the domain.
The ECJ case concerned the domain reifen.eu – meaning “tyre” “or “tire” in German – but the company apparently also applied to register 180 other generic domains using the same method.
Internetportal registered the trademark “&R&E&I&F&E&N&”, knowing that the ampersands would be ignored by EurID’s policy when it applied for reifen.eu.
It did in fact win the domain, and others, during the sunrise, on the back of its Swedish trademarks.
Unfortunately, a man named Richard Schlicht who held a (later) Benelux trademark on the term “reifen” filed a Alternative Dispute Resolution procedure over the registration in 2006 and won.
Internetportal appealed, and it eventually made its way to ECJ. But Europe’s highest court decided last week that reifen.eu had indeed been registered in bad faith and in violation of the rules.
There’s loads of stuff in the ruling to excite IP lawyers, but as far as I can tell it boils down to one basic common-sense precedent: if you register a trademark purely for the purposes of securing a domain name in a sunrise period, you’re out of luck, at least in Europe.
Given that pretty much all the dictionary terms under .eu have already gone, and that the sunrise period ended years ago, I doubt the finding will have a great deal of immediate practical impact.
But a more general point holds, for those considering applying for a new TLD: if there are loopholes in your sunrise period rules, you can guarantee they will be exploited.