Concomitantly to the launch of the .eu on the 7th of December 2005, license contracts blossomed here and there with non-European companies in order to register .eu domain names during the so-called “Sunrise Period”, especially between US companies and European law firms. The juridical set-up is as follows: a USA company willing to reach the European market through a .eu but which did not have any link with the European Community such as headquarters or a principal place of business, had license contracts signed with a trademark attorney located within the Community. The license enabled the trademark attorney to register a .eu domain name on his own name but on the behalf of the trademark holder which did not fulfill the requirements set-up by the article 4, §2b Regulation (EC) n°733/2002 of the European Parliament and of the Council of 22 April 2002. These juridical set-ups emerged during the Sunrise period before the .eu was made available for registration to the general public.
The underlying nature of these contracts appeared doubtful to a Belgian contact lenses company, which decided to raise a preliminary ruling before the CJEU. Through these schemes companies seem to circumvent the requirements laid down by the Regulation.
The Pie Optiek Case
The Belgian company Pie Optiek runs a business of contact lenses and glasses that are sold through an online service. Its core business is done through the website www.lensworld.be. The latter was willing to register a .eu domain name during the Sunrise Period, which started to run from the 7th of December 2005 for a four months period. The said company applied for a Benelux trademark on the sign “Lensworld” before applying for the domain name lensworld.eu. EURid denied the registration of the domain name because Bureau Gevers had already registered it. With the prior registration made by Bureau Gevers the question of the essence of trademark license comes via the backdoor. Another US company, namely Walsh Optical, signed a license agreement with Bureau Gevers. As the US company did not have its headquarters in Belgium, it uses the juridical set-up described above. As a result, Bureau Gevers registered the domain name lensworld.eu before the Belgian company. The question was whether Bureau Gevers can be deemed as a “holder of prior rights” in the light of the EC regulation n°874/2004? Pie Optiek sought relief before the Belgium Courts, its claim was twofold:
– Pie Optiek wanted to obtain acknowledgement that the registration was speculative and abusive and;
– to obtain the transfer of the disputed domain name lensworld.eu.
The advocate general, Mrs Trstenjak in her conclusions released on the 3rd of May, dwells on the necessity to have an establishment within the Community in order to qualify as a registrant for a .eu.
The preliminary ruling which was raised before the CJEU was whether the aforementioned juridical set-up can be deemed as a genuine license contract. Needless to say, the decision of the CJEU was awaited by companies who had entered into these legal arrangements. The arrangement proved to be a genuine threat to non-European companies as the CJEU followed the conclusion of the Advocate General in its decision on July 19, 2012. The CJEU insisted on the utmost importance of having a tie with the EU to qualify as a “holder of prior rights”. The artificial nature of the juridical set-up contravenes the spirit of the Regulation. To quote the CJEU:
” it would be contrary to the objectives of Regulations No 733/2002 and No 874/2004 for a holder of prior right to whom that right is available in its entirety but who does not satisfy the test of presence in the European Union to be allowed to obtain for his own benefit a .eu domain name through a person who satisfies that presence test but to whom that right is not-even partly or temporarily- available”.
This decision could have a domino effect on .eu registrations that were done through this juridical set-up. It highlights that the establishment of a company within the EU is of utmost importance in EU law.