When someone registers a domain name that includes the name of a major trademark, it is advisable to use extreme caution if you want to prevent being involved in expensive lawsuits.
Recently, a small car repair shop in Germany found itself in the midst of a legal battle against French car giant Peugeot. To promote their car repair and tuning facility, they had decided to register the domain name Peugeot-tuning.de. Needless to say that the German branch of the French car manufacturer Peugeot didn’t waste much time suing. The court battle turned out to be very interesting…
Surprisingly, the District Court in Duesseldorf, Germany on November 30th, 2005 ended up deciding in favor of the car repair shop. Peugeot then decided to take this a take their lawsuit to the Supreme Court in Düsseldorf. The Supreme Court overturned the decision of the District Court in favor of the French car manufacturer and ordered the domain name peugeot-tuning.de to be returned to Peugeot.
The reasoning behind their decision was primarily based on the fact that peugeot-tuning.de can easily be confused by consumers as an official website run by the French manufacturer Peugeot, offering tuning services directly to the end-user.
The Supreme Court indicated that they would have decided differently if the car repair shop had registered a domain that did not start with the trademark name Peugeot. If for example the car repair shop had registered tuning-of-Peugeot-cars.com, their decision would have been in favor of the car repair shop because that domain name can hardly be confused as originating from Peugeot itself.
It is important to consider this ruling when registering domain names that include trademarks. If it is possible for an end-user to believe that they’re dealing directly with the trademark holder that it would be wise to reconsider registering that domain.
