21.3.2009   

EN

Official Journal of the European Union

C 69/22

Reference for a preliminary ruling from the Oberster Gerichtshof (Austria) lodged on 22 December 2008 — Internetportal und Marketing GmbH v Richard Schlicht

(Case C-569/08)

(2009/C 69/40)

Language of the case: German

Referring court

Oberster Gerichtshof

Parties to the main proceedings

Applicant: Internetportal und Marketing GmbH

Defendant: Richard Schlicht

Questions referred

1.

Is Article 21(1)(a) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration (1) to be interpreted as meaning that a right within the meaning of that provision exists,

(a)

if, without any intention to use it for goods or services, a trade mark is acquired only for the purpose of being able to register in the first phase of phased registration a domain corresponding to a German-language generic term?

(b)

if the trade mark underlying the domain registration and coinciding with a German-language generic term deviates from the domain in so far as the trade mark contains special characters which were eliminated from the domain name although the special characters were capable of being rewritten and their elimination has the effect that the domain differs from the trade mark in a way which excludes any likelihood of confusion?

2.

Is Article 21(1)(a) of Regulation (EC) No 874/2004 to be interpreted as meaning that a legitimate interest exists only in the cases mentioned in Article 21(2)(a) to (c)?

If that question is answered in the negative:

3.

Does a legitimate interest within the meaning of Article 21(1)(a) of Regulation (EC) No 874/2004 exist if the domain holder intends to use the domain — coinciding with a German-language generic term — for a thematic internet portal?

If questions (1) and (3) are answered in the affirmative:

4.

Is Article 21(3) of Regulation (EC) No 874/2004 to be interpreted as meaning that only the circumstances mentioned in subparagraphs (a) to (e) are capable of establishing bad faith within the meaning of Article 21(1)(b) of Regulation (EC) No 874/2004?

If that question is answered in the negative:

5.

Does bad faith within the meaning of Article 21(1)(b) of Regulation (EC) No 874/2004 exist if a domain was registered in the first phase of phased registration on the basis of a trade mark, coinciding with a German-language generic term, which the domain holder acquired only for the purpose of being able to register the domain in the first phase of phased registration and thereby to pre-empt other interested parties, including the holders of rights to the mark?

(1)  OJ 2004 L 162, p. 40.