The Freename Forum

The watch manufacturer Breitling saw its trademark rights infringed by the domain breitling.com.de and - although it is a .de domain - took the matter to The Forum to conduct dispute resolution proceedings. And rightly so.

There is no dispute resolution procedure like the UDRP for the German country code extension .de. From the point of view of DENIC eG, the administrator of the German extension, the German legal system provides sufficient functional possibilities to take action against infringing domain registrations. To protect rights holders, there is a dispute procedure for .de domains that must be applied for with DENIC eG, which ensures that a .de domain cannot simply be passed on if there is a dispute over it. Nevertheless, the watch manufacturer Breitling initiated dispute resolution proceedings before The Forum against the .de domain breitling.com.de and was successful in obtaining the domain. The basis for this is the “CentralNic Dispute Resolution Policy” (CDRP), as breitling.com.de is a third-level domain under the umbrella of CentralNic, a provider of sub-level domains - in this case .com.de.

The breitling.com.de domain registered on September 12, 2023 was registered and parked via a privacy service. Breitling initiated the dispute resolution procedure under the CDRP with The Forum, as only The Forum is accredited for this procedure by CentralNic. The procedure went as expected. Breitling is a long-established company founded in the 19th century and is now considered famous. It referred to its IR trademark “BREITLING”, registered in 1964, and argued extensively that the owner of the domain breitling.com.de was in no way legitimate and could not use the domain for any legitimate purpose. The opponent did not respond to the case. The Honorable Neil Anthony Brown KC was appointed as the decision-maker, who upheld Breitling's complaint (Forum Claim Number: FA2502002140778).

Brown first confirmed that the mediation attempt between the parties requested by the CDRP had taken place. With regard to case law, he oriented himself to decisions under the UDRP because the CDRP is similar to it. He established the identity of trademark and domain, whereby the generic top level domain .com and the country extension .de are added to the trademark term, but neither of these change the identity between domain and trademark. He found that all of the complainant's allegations regarding the domain holder's lack of authorization were true, and since the domain holder had not defended against this, Brown also confirmed the second element of the CDRP. Brown also found that the opponent's bad faith was satisfied because the complainant's trademark was well known far and wide; it was inconceivable that the opponent did not know it when he registered the domain, and the evidence suggested that he had registered the domain precisely because of the trademark. It is also inconceivable that he will be able to use the domain for any bona fide offer of goods or services. The opponent had also tried to prevent the complainant from registering the domain for himself. The third element of the CDRP was therefore also fulfilled. The requirements of the CentralNic Dispute Resolution Policy were therefore all met and Brown decided to transfer the domain.

Thus, a small legal dispute reminds us that in certain exceptional cases, namely when a .de domain falls into the ranks of the third level domains administered by CentralNic (and this currently only applies to “.com.de”), a dispute resolution procedure does apply: under the CentralNic Dispute Resolution Policy and only before The Forum.

The UDRP decision on the breitling.com.de domain can be found at:
https://www.adrforum.com/DomainDecisions/2140778.htm

The CentralNic Dispute Resolution Policy can be found at:
https://centralnicregistry.com/support/ ... ute/policy