Registrant owns domain names such as GELBESBRANCHENBUCH.COM, which appears to translate as variants of “Yellow Business Directory” (the “Names”). Deutsche Telekom Media brought a civil infringement action in Germany based on its rights in YELLOW PAGES. It received an injunction relating to use of the Names, but not transfer, suspension, disablement or deletion of the Names. The US-based registrar (Moniker) disabled the names. Registrant sues Moniker in the US under 15 USC 14(2)(D)(v):
(v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
A ‘policy described under clause(ii)(II)’ ccovers:
(II) . . . a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another’s mark.
Among the interesting questions here include whether Plaintiff is eligible for relief under the Lanham Act. In the Barcelona.com and the Monte Carlo casino cases, it was held that plaintiffs (that is to say, mark owners) had to own marks that were protectable under US law, in order to be eligible for Lanham Act relief.
Also, there is the interesting prospect that if the Names were re-activated, could they be accessible in Germany without violating the German injunction.