As a matter of principle, conflicts between a domain name and a trademark or other distinctive sign will only arise if the commercial activities which are carried out via the Internet have an effect on the territory where the sign is protected.
Claims and Disclaimers
Regarding commercial activities which are carried out via the Internet and have an effect on the territory where the sign is protected, "disclaimers" may provide an adequate way to indicate there is no intention to carry out business in the territory concerned.
For example, in case of a conflict with a German trade mark or trade name, it could be indicated on the homepage that the products or services offered are not available to German customers.
In addition, in the case that services or other commercial activities are carried out directly via the Internet, it may be necessary to make the access to the relevant website dependent upon use of a password that can be acquired only by Internet users of those countries in which the domain name does not conflict with a prior right.
According to general principles of trademark law, trademarks and commercial designations can be infringed by acts that have been committed in a foreign country if these acts have a domestic effect. Consequently, the user of a domain name that is used for a website that can be called up from German territory and that is directed to German Internet users must expect to be sued for trademark infringement under German law.
However, as stated above, no infringement will be held to exist if products and services are not available on the German market, or if the number of possible addressees is negligible.
Not just Coincidental
Certain indications as to the prerequisites under which the use of a domain name constitutes a tortious act can be inferred from the case law handed down by the Federal Supreme Court on international jurisdiction in connection with cross-border distribution of press items.
In these cases, the principle has been applied that jurisdiction only exists where the newspapers or magazines are distributed within the course of regular trade, intentionally and not just coincidentally. With respect to domain names, the same rules should apply.
Therefore, also as far as jurisdiction is concerned, the fact that a domain name can be perceived by German Internet users is not sufficient if the advertised products and services are not available on the German market, and/or if the number of possible addressees is negligible.
Therefore, in some cases, claims can be asserted against an infringer even outside the German legislation, if the infringement has a close connection with Germany, for instance, webpages in the German language which are stored on a server outside Germany and which are accessible via a non-German domain.
The WIPO has established a domain name dispute resolution service for generic top level domains, which gives effect to the uniform domain name dispute resolution policy adopted by the Internet Corporation for Assigned Names and Numbers [ICANN]. Any Lawyer or Patent Attorney can represent his clients before the [WIPO] in international domain name conflict cases.