The Freename Forum

In a recent dispute over the domain stein.eu, the complainant with the surname Stein failed against a Spanish domain investment company, which was able to demonstrate that it had registered the domain because of its inherent value resulting from its dictionary meaning.

Mr. Stein from Germany considered his name right to be infringed by the domain stein.eu and initiated ADR proceedings for .eu domains before the WIPO. Unlike the UDRP, the ADR procedure for .eu domains also allows name rights to be asserted as part of the dispute resolution procedure. Accordingly, Mr. Stein, as the complainant in the proceedings, argued, among other things, that his right to a name under Section 12 of the German Civil Code (BGB) was being infringed here; the domain corresponds to his surname. From the fact that the opponent is offering the domain for sale at a price of EUR 200, it follows that it has no right or legitimate interest in the domain. She only holds the domain in order to sell it and not to use it. By registering the domain, she was preventing him from registering it for herself as the authorized holder of the name. She had registered the domain primarily to sell, lease or otherwise transfer it to an authorized name holder. The complainant requested the transfer of the domain stein.eu to himself. The owner of the domain stein.eu and opponent of the ADR proceedings is the Spanish Premium Domain Names S.L., which invests in domains and offers them for sale. The domain stein.eu has been registered to it since June 2022. It offered it for immediate purchase via the platform dropcatch.ai for EUR 200. She counters the complaint by arguing that the term “stone” is a generic term with a broadly applicable meaning that is suitable for a variety of uses that have nothing to do with a personal name. It was because of this inherent value of the term, based on its use for projects with geological themes and others, that the domain was registered. Under no circumstances had the complainant or any other person been targeted. The complainant is not a well-known personality and is not the owner of a trademark that grants him exclusivity in the use of the word “stone”. The French lawyer Jane Seager was appointed as the decision-maker.

Seager dismissed the complaint as the complainant could not prove that the domain was registered by the opponent with regard to him (WIPO Case No. DEU2024-0039). It conceded to the complainant that he was the name holder and that the domain, apart from the .eu extension, was identical to his name. However, the complainant did not meet the other requirements of the ADR procedure. Seager acknowledged that the domain reflected the complainant's name, but also that it was a dictionary term. There was no indication that the domain was offered for sale by the opponent to the complainant. Rather, the opponent's submission is convincing, according to which it registered the domain due to the inherent value of the dictionary term without having knowledge of the complainant. Consequently, the complainant has not provided any evidence that the opponent has no right or legitimate interest in the domain. With regard to bad faith on the part of the opponent, the complainant had not provided any evidence that she had registered the domain with regard to him or his family name. The opponent had presented its business model based on the purchase and sale of domains with inherent values. Seager concluded that the complainant had not proven that the opponent had registered the domain in bad faith. She dismissed the complaint.

This minor decision reminds us once again that - unlike under the UDRP - the right to a name is also protected in ADR proceedings. On the other hand, it shows that a name holder cannot simply assert a claim to a .eu domain if it corresponds to a dictionary term. The domain, which was offered for immediate sale for EUR 200 before the ADR procedure, now requires a minimum bid of EUR 1,000 from the prospective buyer.

The ADR decision on the domain stein.eu can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-0039.pdf

The ADR rules can be found at:
https://eu.adr.eu/website/rules