.EU Registrants Must Have Presence in EU, Europe’s Highest Court Rules

Only companies with an established presence in Europe Union were able to take advantage of the sunrise period for trademark holders and to register.EU domain names the European Union’s highest court ruled Thursday.

The ruling by the EU Court of Justice came about following a dispute over the domain name lensworld.eu between the Belgian eyewear company Pie Optiek SPRL that sells its products online and intellectual property consultant Bureau Gevers SA.

In their claim, Pie Optiek seeks, first, a declaration that Bureau Gevers’ registration of that domain name was speculative and abusive. Second, Pie Optiek seeks to have that domain name transferred to it. Pie Optik argued that Bureau Gevers has no right to the registration of the domain name as it is not itself a ‘holder of a prior right’ or trademark.

During the sunrise period, Bureau Gevers filed an application for the domain name ‘lensworld.eu’ and secured its registration before Pie Optiek.

In the judgement outline of the case, Pie Optik had argued that:
the holder of such a right is the United States company Walsh Optical. However, Walsh Optical is not entitled to apply for registration as its registered office is not within the European Union and, consequently, it does not meet the legal requirements. According to Pie Optiek, in order to circumvent the eligibility criteria, Walsh Optical and Bureau Gevers implemented a strategy consisting in the conclusion of an agreement entitled ‘Licence Agreement’, whereby Bureau Gevers agreed to lend its name and address within the European Union in order to allow its United States client to register the domain name at issue. In addition, Pie Optiek questions whether the agreement at issue can be regarded as a licence agreement at all within the legal meaning of that term, as Bureau Gevers was authorised simply to register but not to make use of the trade mark, for example, for the purpose of marketing of goods or services under that trade mark.

The question that arose in the case was “whether it is compatible with European Union (‘EU’) law to allow a company which, by reason of its establishment in a third country, is not an eligible party, nevertheless to register a domain name on the basis of a licence agreement with a company that is established in the European Union.”

In the judgement, the court ruled that “the agreement concluded between Walsh Optical and Bureau Gevers did not provide for the use of the trade mark or the corresponding domain name for the purposes of trade.” Which meant Bureau Gevers could not be regarded as a ‘licensee of a prior right’. The judgement noted that Walsh Optical had no link to the European Union, which was one of the prerequisites for a .EU domain. The ruling noted “that the .EU TLD was intended to ‘provide a clearly identified link with the Community, the associated legal framework, and the European market place’.”

“Consequently, it would also be contrary to the spirit and purpose of Regulation No 733/2002 to allow an undertaking that is not an eligible party to obtain registration of the domain name sought. That would also have to be the case where the provisions governing eligibility for registration are ultimately circumvented in so far as registration is achieved by means of a legal construction such as the commissioning of a third-party organisation that is resident in the European Union and therefore eligible to apply.”

The judgement is available for download in all main European languages. The English version, with links to other languages, is available from:
curia.europa.eu/juris/celex.jsf?celex=62011CC0376&lang1=en&type=NOT&ancre=