Deutsche Shell wins dispute over "shell.de"
Landmark decision of the Federal Supreme Court of Justice on domain names
In a landmark decision, the I. Civil Division of the Federal Supreme Court of Justice yesterday decided that private use of an internet address could also result in an infringement of the right to a name of a company with the same name.
The claimant was Deutsche Shell GmbH, a subsidiary of the globally known oil company Shell. In May 1996, when Deutsche Shell wanted to register the internet address "shell.de", it found out that this domain name had recently been reserved for a company which had registered a multitude of domain names in order to offer them to the bearer of the name later on. When Deutsche Shell did not want to get involved in such a transaction, the other company transferred the internet address "shell.de" to the defendant, whose civil name was Andreas Shell. Under this address, the defendant initially set up a homepage for the translation and press agency he pursued as a secondary occupation, using the colours red and yellow.
Thereupon, German Shell brought an action against Andreas Shell, asking that the defendant be prohibited from using the domain name "shell.de"; and in addition, that he be ordered to transfer this address to the company. During the court case, the defendant undertook to stop using the domain name for business purposes and changed his home page accordingly.
The claimant was successful before the Regional Court and the Higher Regional Court in Munich. The courts took the view that, by using the internet address "shell.de", the defendant infringed the plaintiff's right to a name protected by Article 12 German Civil Code. Owing to the extraordinary prominence and fame of the name and brand "Shell", somebody accessing the internet address "shell.de" expected the plaintiff's home page, not the home page of a person unknown to him with the surname Shell. The claimant had a commercial interest worthy of protection in ensuring that those wishing to get into contact with him did not end up on the defendant's homepage. The general public was also interested in being kept off the wrong track. It could be more reasonably expected of the defendant to dissociate himself from the claimant than vice versa, the Court held.
In the main, the Federal Supreme Court of Justice approved of this decision and allowed the claimants claim to an injunction. Private use of the internet address "shell.de" could also be viewed as an infringement of the claimants right to a name. As a domain name could only be allocated once, and as the defendant owned the internet address "shell.de", the claimant was deprived of the opportunity to inform interested internet users about his company in a simple fashion. A considerable section of the public searched for information on the internet by typing in the name of the company looked for as the internet address. But in principle, as a bearer of the name Shell, the defendant could not be deprived of the right to use his own name to appear on the internet, the Court held. If several persons could be considered as entitled to bear a domain name, their respective interests had to be balanced against each other. During this balancing exercise, the priority principle of justice - the motto "first come first served" - had to be considered as the main authority. In a dispute between two persons with the same name, the better known bearer of the name was fundamentally also subject to this principle. Likewise, the Court held that business interests were not to be granted priority over private interests.
However, the Federal Supreme Court of Justice took the view that the interests of the parties to this dispute were of such different weight that, exceptionally, this time the priority rule could not be followed. The consideration due between persons with the same name demanded that the claimant chose an addition to his domain name, in order to prevent that a multitude of customers interested in the offers of the company Shell called up his homepage instead, the Court held. On the one hand, there was the brand "Shell", endowed with extraordinary prominence. An internet user typing "www.shell.de" in the address bar expected that the claimant appeared on the internet. Furthermore, it was not possible to inform the heterogeneous group of clients interested in the claimants internet offer in a simple fashion of the fact that the plaintiff's appearance on the internet could be found under a domain name different from "shell.de". On the other hand, friends of the defendant and his family would not expect to be able to access the private home page of the Shell family through "shell.de". In addition, as a homogeneous user group, they could be easily informed of a change of the domain name, the Court held.
As far as Deutsche Shell's claim to a transfer of the internet address "shell.de" was concerned, the Federal Supreme Court of Justice dismissed the action. The claimant could only demand that the defendant relinquished the address "shell.de", but not that he transferred it to the claimant. Although this was irrelevant in the case here, it was possible that a third party had an equally good or an even better right, the court held. For that reason, in general a claim for transfer of the domain name had to be refused.
Judgment of 22 November 2001 - I ZR 138/99
Karlsruhe, 23 November 2001
Pressestelle des Bundesgerichtshofs
(Translated by Andrea Müller, London)