Bad-faith .eu domain name registrations can be proven only after consideration...

said Thursday. Austrian company Internetportal und Marketing registered the domain “www.reifen.eu” during the “sunrise” registration period open only to holders of prior rights and public bodies, the court said. The name was based on its trademark “&R&E&I&F&E&N&,” which it had registered in Sweden for safety belts, it said. But it intended to run an Internet site for tires ("reifen” in German), it said. To register the name during the sunrise period, the company eliminated the “&s” from the name because of EU law barring use of such special characters, the court said. The company also applied for registration of 180 domain names consisting of generic terms, it said. The owner of the Benelux trademark “reifen,” registered for window cleaning products, challenged the Austrian registration. Arbitrators found it had been registered in bad faith and transferred it to the reifen trademark owner, the court said. The issue is in the Austrian Supreme Court, which asked the ECJ for a preliminary ruling on the criteria for determining a bad faith registration. The court said bad faith can be established by circumstances other than those set out in EU rules, because the list isn’t exhaustive. In determining the circumstances in which a trademark was registered, the focus should be on: (1) Whether there’s intent not to use the trademark in the market for which protection was sought. (2) The “unusual and linguistically irrational” presentation of the trademark. (3) The fact that a large number of other trademarks corresponding to generic terms was registered. (4) The fact that the trademark was registered just before the beginning of phased registration of .eu domain names. In considering whether the .eu registration was in bad faith, the court said, key factors are whether special characters or punctuation marks were used abusively to apply EU transcription rules; whether the organization registered a trademark obtained under questionable circumstances during the sunrise period; and whether the entity also applied for registration of many domain names corresponding to generic terms. If Interportal und Marketing hadn’t tried to register a trademark created solely for the purpose of obtaining a desired domain name during the .eu sunrise period, it would have had to wait until the general registration period, when it could have been pre-empted like anyone else interested in the domain, under the first come-first served principle, the ECJ said. The applicant’s conduct was “manifestly intended” to circumvent the phased process, it said.