Opinion of Advocate General Trstenjak delivered on 10 February 2010.

A – Preliminary point

33. By way of a preliminary point, the claimant submits that, at the time of registration of the domain ‘www.reifen.eu’, EURid had accepted that, on the basis of the trade mark ‘&R&E&I&F&E&N&’, the claimant had the requisite standing. Consequently, any faults in that regard should have been raised by the defendant by means of a procedure directed against the registry under Article 22(1)(b) of Regulation No 874/2004, and not by means of a procedure directed against the actual holder of the domain. EURid’s decision to register the domain ‘www.reifen.eu’ in favour of the claimant is therefore no longer amenable to review in inter partes proceedings.

B – Question 1(a)

34. According to the claimant, the reflections of the referring court in relation to Question 1(a) concern only the procedure against the registry. If the party opposing a domain name holder considers that the registry has erred in recognising the legitimacy of the domain name holder for the sunrise period, it should initiate a procedure against the registry. None the less, the claimant argues that the first part of Question 1 should be answered in the affirmative.

35. In the defendant’s view, when a trade mark is registered without any intention of using it, for the sole purpose of enjoying certain legal advantages, it is a ‘pseudo-mark’. To recognise such marks as rights within the meaning of Article 10(1) or Article 21(1)(a) of Regulation No 874/2004 would be tantamount to authorising – to encouraging, even – circumvention and abuse of specific provisions of that regulation, which were adopted for the precise purpose of protecting the holders of ‘genuine’ prior rights. The argument that that underlying purpose is not jeopardised if a ‘generic term’ is registered as a domain name fails to take account of the fact that the prior rights to be asserted, for the purposes of Article 10(1) or Article 21(1)(a) of Regulation No 874/2004, may also relate to generic terms.

36. The Czech Republic, broadly supported by the Italian Republic, submits that it should first of all be determined whether the trade mark at issue in the main proceedings was registered in bad faith. The fact that the trade mark had been registered solely for the purpose of ensuring participation in the first phase of registration of domain names shows that the claimant was, from the outset, motivated by a dishonest intention and pursued an objective other than that for which trade marks are intended. The claimant thus sought to take an unjustified advantage, or to place its competitors at a disadvantage.

37. Moreover, it is contended, the claimant intentionally used the character ‘&’ in the name of the trade mark in an unusual and linguistically absurd way. The speculative and opportunistic nature of the use of the ‘&’ character is also demonstrated by the fact that the claimant had a total of 33 trade marks registered for generic names, each incorporating the character ‘&’ between the individual letters. If the referring court were to find that the trade mark registration at issue had not been made in good faith, it would be impossible – in the view of the Czech Republic and the Italian Republic – to regard the right arising from that trade mark as a right within the meaning of Article 21(1)(a) of Regulation No 874/2004.

38. The Commission argues that neither Directive 89/104/EEC⁽⁷⁾ nor Regulation (EC) No 40/94⁽⁸⁾ makes the registration of a sign as a trade mark subject to the intention of the putative proprietor of the trade mark to use the sign as a trade mark for the goods or services which it covers. Consequently, the fact that a trade mark has been acquired solely for the purpose of being able to apply, on the basis of that mark, for registration of a domain name during the first phase of phased registration is irrelevant for the purposes of determining whether the domain name holder, who at the same time owns a trade mark, can assert a right on the basis of that trade mark within the meaning of the first possibility provided for in Article 21 (1)(a) of Regulation No 874/2004.

39. As regards the fact that the domain name registered on the basis of the trade mark corresponds to a generic term in an official Community language, the Commission states that, although such a circumstance may be significant in the context of Article 3(1)(b) to (d) of Directive 89/104 or Article 7(1)(b) to (d) of Regulation No 40/94 – that is to say, in order to determine whether an absolute ground for refusal precludes registration of the trade mark itself – that circumstance is irrelevant in the context of applying Regulation No 874/2004.

40. In addition, the Commission notes that, according to the Court’s case-law, points (b) and (c) of Article 3 (1) of Directive 89/104 do not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant sections of the public in the Member State in which registration is sought are capable of identifying the meaning of the term.⁽⁹⁾

C – Question 1(b)

41. The claimant submits that the three options provided for in Article 11 of Regulation No 874/2004 are on a par, as is apparent from the wording of that provision. Moreover, the claimant also calls into question the good faith of the defendant at the time of registration of the claimant’s trade mark, the sole reason for which, according to the claimant, was to secure a better starting position for the purpose of securing the domain www.reifen.eu.

42. The defendant contends that the registered trade mark and the domain name at issue are not identical because, in its view, the special character ‘&’ should have been rewritten as ‘und’ (‘and’) and not eliminated. Consequently, the claimant has no right to the domain name www.reifen.eu.

43. In the view of the Czech Republic, it matters little, for the purposes of determining the existence of a right within the meaning of Article 21(1)(a) of Regulation No 874/2004, which transcription rules the claimant used to transcribe the trade mark as a domain name. Article 11 of Regulation No 874/2004 does not accord preferential status to any of the possible ways of transcribing special characters.

44. In the opinion of the Italian Republic, no right exists where the trade mark on which the domain registration is based diverges from the domain name in so far as it contains special characters which have been eliminated.

45. The Commission gives a joint answer to part of Question 1(b) and to Questions 2 to 5 (see above). In any event, and as a preliminary point, the Commission notes that the presence of a legitimate interest within the meaning of the second possibility provided for in Article 21(1)(a), read in conjunction with Article 21(2) of Regulation No 874/2004, on the one hand, and the absence of bad faith within the meaning of Article 21(1)(b), read in conjunction with Article 21(3), on the other, constitute a single fact. That point of view is borne out by the choice of use of the domain name by the domain name holder as a criterion relevant both to paragraph 2(a) and to paragraph 3(b)(ii) and (iii) of Article 21 of Regulation No 874/2004.

D – Question 2

46. The claimant, the Czech Republic and the Commission submit that the lists set out in Article 21(2) (a) to (c) of Regulation No 874/2004 are not exhaustive. By contrast, the defendant and the Italian Republic are of the opposite opinion.

E – Question 3

47. The claimant and the Czech Republic submit that, although the claimant did not use the domain name prior to the start of the dispute, or make demonstrable preparation to do so, within the meaning of Article 21(2)(a) of Regulation No 874/2004, and in view of the illustrative and non-exhaustive character of that provision, the intention of managing a website can be a sufficient ground for the purposes of demonstrating a legitimate interest.

48. In the view of the defendant, the assertion of an intention of using the domain name in a particular way is not sufficient to demonstrate a legitimate interest. A mere assertion of use does not match any of the sets of circumstances referred to in Article 21(2)(a) to (c).

F – Question 4

49. The claimant, the defendant, the Czech Republic and the Commission maintain that the lists set out in Article 21(3)(a) to (e) of Regulation No 874/2004 are not exhaustive.

G – Question 5

50. The claimant submits that an interpretation of Article 21 of Regulation No 874/2004 which allows faults on the part of the registry to be alleged even after the expiry of the 40-day period prescribed for bringing such an action against the registry (‘the sunrise appeal period’) would run counter to the principle of legal certainty.

51. Moreover, the claimant denies having acted in bad faith, since the cases of ‘bad faith’ specified in Article 21(3) of Regulation No 874/2004 are designed to combat domain grabbing. However, in the present case, it is a question of the registration of domains consisting of generic terms, which can in no circumstances infringe the rights of third parties, since generic expressions cannot be covered by exclusive rights. Domain grabbing is therefore excluded by definition in cases where domains consisting of generic terms are registered. Consequently, the claimant did not act in bad faith within the meaning of Article 21(3) of that regulation.

52. The defendant and the Czech Republic contend that bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004 is established if the domain name was registered during the first phase of phased registration on the basis of a trade mark which the domain name holder obtained only for the purpose of being able to apply for registration of a domain name during the first phase and thereby to pre-empt other interested parties, including the holders of rights over the mark.

53. According to the Commission, if the person who claims that the domain name should be revoked has, for his part, applied for registration of the same domain name during the first phase of phased registration and if that application has been rejected because of priority being accorded to an earlier application submitted by the holder of the domain name, in accordance with the ‘first come, first served’ principle laid down in Article 14 of Regulation No 874/2004, the holder of the domain name can oppose revocation by relying on the second possibility provided for in Article 21(1)(a) and on Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(2) and (3) thereof, only if the registration was carried out in accordance with the provisions laid down in Chapter IV of that regulation and, in particular, with Article 11 thereof. As regards Article 11 of Regulation No 874/2004, the Commission maintains that the three options provided for in that provision for the treatment of special characters can be ranked in order of precedence as follows:

• if a special character has a certain semantic value, as is the case with $ % & + =, only its rewriting and conversion into a corresponding term can be contemplated;

• if a special character has no semantic value, but is used as a separative element, as is the case with # <> { } [ ] \ /:; , .? -, it should be replaced with a hyphen;

• only if a special character has neither a semantic value nor a separative function, as is the case with ~ ^ * ‘–, should it be eliminated entirely.

54. Accordingly, in the present case, the special character ‘&’, which occurs several times in the trade mark, should not have been completely eliminated at the time of registration of the domain name, but rewritten as a corresponding term (‘und’ (‘and’)). As a consequence, the registration of the domain name ‘www.reifen.eu’ at issue is contrary to Article 11 of Regulation No 874/2004.

A – The claimant’s preliminary observations

55. By its preliminary observations, the claimant maintains in essence that any faults committed by the registry with regard to the registration of the domain name cannot be raised against it. In any event, those faults – if any – should have been raised in the context of a procedure directed against the registry under Article 22(1)(b) of Regulation No 874/2004, not a procedure directed against the actual holder of the domain.

56. The claimant’s submissions raise the question of the overlap between the ADR procedure and judicial proceedings and, in particular, the question whether the fact that no procedure has been initiated, pursuant to Article 22(1)(b) of Regulation No 874/2004, against a decision taken by the registry prejudges actions against that decision which are based on complaints which could have been put forward during the ADR procedure, in that it causes them to be time-barred.

57. Even though that question has not been raised formally by the referring court, an answer may be helpful to it,⁽¹⁰⁾ in so far as both Question 1(a) (concerning the circumstances underlying the registration of the trade mark in Sweden) and Question 1(b) (concerning the possible misapplication of the transcription rules for special characters) refer to complaints which could have been the subject-matter of a procedure against a registry decision. Since the defendant directed his case only against the claimant, it remains to be examined whether those complaints may be out of time.

58. In that context, it should be pointed out, on the one hand, that the ADR procedure established by Regulation No 874/2004 was not framed as an arbitration procedure in the strict sense, but rather as a quasi-administrative procedure which does not preclude the bringing – at the same time or subsequently – of proceedings before the national courts.⁽¹¹⁾ Moreover, that ADR procedure purposely lacks certain characteristic features of judicial proceedings, such as hearing of the parties and measures of inquiry for the purposes of the production of evidence, which inevitably reduces the scope of the parties’ rights of defence in favour of efficiency.⁽¹²⁾

59. That particular configuration of the ADR procedure is explained, first, by the desire on the part of the legislature to provide for short procedures so as to minimise costs for operators, as had already been suggested by the World Intellectual Property Organisation (WIPO) with regard to the UDRP (Uniform Domain-name Dispute Resolution Policy) rules of the Internet Corporation for Assigned Names and Numbers (ICANN).⁽¹³⁾ Secondly, the aim is to protect holders of ‘prior rights’, within the meaning of Article 10 of Regulation No 874/2004, in view, inter alia, of the risk of domain grabbing, which led the legislature to create a procedure whose very structure is designed to favour the holders of such prior rights⁽¹⁴⁾ vis-à-vis the holders of domain names.⁽¹⁵⁾

60. In the light of the foregoing, it would be contrary to the very idea of the rule of law to take the approach that certain complaints can be submitted only by means of the ADR procedure and that, unless they are first submitted through such a procedure, they are no longer admissible before the national courts. Such an interpretation would render redundant Article 22(13) of Regulation No 874/2004, read in conjunction with Article 21(1) thereof, under which revocation of a domain name by the courts is possible both where the action is brought directly before them and where it is not initiated until after the conclusion of the ADR procedure.

61. On the contrary, the time-barring of complaints not put forward against the EURid registry by means of an ADR procedure under Article 22(1)(b) of Regulation No 874/2004 would be contrary to the spirit of that provision. Article 22(1) allows any party to initiate an ADR procedure either against speculative or abusive registration or against the registry. However, if, by initiating a procedure only against an abusive registration, a party risked no longer being able to put forward complaints against the registry, it would then always have to initiate both procedures in order to be able also to submit its arguments before the courts. Nevertheless, there is nothing in the wording of Article 22(1) to suggest that there was an obligation to initiate both procedures, failing which complaints not raised before the Czech Arbitration Court would be time-barred.

62. In conclusion, the claimant’s preliminary observations are irrelevant and, accordingly, need not be taken into account.

B – Question 1

C – Questions 2 and 3

82. By its second and third questions, which should be dealt with together, the referrring court asks how a ‘legitimate interest’ within the meaning of Article 21(1)(a) of Regulation No 874/2004 can be identified in the circumstances of the case before it. In particular, it asks, on the one hand, whether the list of situations in Article 21(2)(a) to (c) of Regulation No 874/2004 is exhaustive and, on the other, whether the mere intention of using a domain name for a thematic internet portal is sufficient to satisfy the conditions for demonstrating legitimate interest.

83. First of all, since the existence of a ‘right’ within the meaning of Article 21(1) of Regulation No 874/2004 follows from the answer to Question 1, and given that ‘right’ and ‘legitimate interest’ are alternatives for the purposes of satisfying the first condition for the application of that provision, the answers to Questions 2 and 3 are of practically no further use to the national court. Consequently, the observations set out below are purely by way of subsidiary considerations.

84. As regards the question whether the list of situations in points (a) to (c) of Article 21(2) is exhaustive, it should be noted at the outset that a comparison of the various language versions of those provisions reveals an error in the German version. The latter reads as follows: ‘(2) Ein berechtigtes Interesse im Sinne von Absatz 1, Buchstabe a) liegt vor, wenn …’. That wording – which could be rendered literally as ‘[a] legitimate interest within the meaning of point (a) of paragraph 1 exists where: …’ – introduces a categorical tone which could lead it to be inferred that a legitimate interest exists only in the cases expressly referred to, which are then set out.

85. By contrast, the wording of a number of other language versions clearly shows that the Community legislature did not seek to limit proof of the existence of legitimate interest to the situations envisaged in points (a), (b) and (c). That is clear from the use of the verb ‘may’, which plainly demonstrates the non-exhaustive character of those hypothetical situations.⁽²¹⁾

86. That literal interpretation of the text is borne out by a teleological argument: among the objectives pursued by Regulation No 874/2004, attention should be drawn to the desire for speedy proceedings before the ADR panels. In that context, the rules of interpretation – in particular, for terms with a high legal content, such as ‘legitimate interest’ or ‘bad faith’ – must be regarded as an aid provided by the legislature for the ADR panels, in so far as they may consist of only one person⁽²²⁾ and their members will not necessarily be lawyers.⁽²³⁾

87. In addition, the list of situations in which a legitimate interest may exist is rendered necessary from the schematic point of view: although Regulation No 874/2004 already contains (in Article 10, to which Article 21(1) refers) a very flexible definition of ‘right’ – in particular as regards prior rights – or refers to national and Community laws, it is silent as to the meaning of ‘legitimate interest’, a notion which is only referred to in Article 21. Accordingly, in order to make the task of the panels easier, and in the absence of any provision containing relevant definitions for the purposes of applying the Regulation, the only provision likely to provide guidance on that notion was Article 21 itself. Furthermore, since the list of rights is, by its very nature, open-ended and non-exhaustive, there can be no reason why it should be otherwise in the case of the list relating to ‘legitimate interest’.

88. Consequently, now that it has been concluded that the list of situations envisaged in points (a) to (c) of Article 21(2) of Regulation No 874/2004 is non-exhaustive, it is necessary to focus on the question whether the mere intention of using a domain name is sufficient to meet the condition for demonstrating a legitimate interest.

89. In this context, it is noteworthy that the three situations listed in points (a) to (c) of Article 21(2) of Regulation No 874/2004 expressly call for, or presuppose, use of the name. Only in the first case is it permissible not to require such use, where the holder of that name has made demonstrable preparation for the offering of goods or services.

90. However, a mere declaration of intention to use the domain name could not be regarded as a preparation for making such an offer of goods or services; legal certainty requires proof of the existence of an action plan setting out specific measures for the purpose of starting the proposed activity as soon as possible. If, for example, a detailed business plan had to be accepted as evidence in that regard, other documents indicating a less detailed state of progress – such as draft company memoranda and articles of association or development of a website – should also be accepted as demonstrating the existence of legitimate interest.⁽²⁴⁾

91. With regard to the claimant’s argument that, at the material time, it had postponed commencement of preparations for its activity pending the outcome of the present dispute, it must be pointed out that, even if that approach could be regarded as prudent, it could also suggest that all the claimant is seeking is registration of the domain name. However, in the absence of any substantiating evidence, that aim on its own cannot be considered ‘legitimate’ in the ‘sunrise period’, but only in the ‘landrush period’, in respect of which the applications have not been made subject to any requirement.

92. However, since those assessments regarding intentions and the launching of an activity in support of the domain name are matters of fact, it is for the national court to determine, in the light of all the factual circumstances of the case before it, whether the holder of the domain name has actually proved the existence of such a plan, or produced the requisite documents or other evidence in the absence of which a legitimate interest could not be inferred from the mere intention to use the domain name.

D – Questions 4 and 5

93. By these two questions, which should be examined together, the Oberster Gerichtshof seeks, in essence, to ascertain, first, whether the claimant’s conduct was in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004 and, secondly, whether the list in Article 21(3) of situations indicative of bad faith is exhaustive.

94. First, as regards the question whether the list set out in Article 21 (3) is exhaustive, it should simply be pointed out that, again, there is a mistake in the German language version of Regulation No 874/2004. As with Question 2,⁽²⁵⁾ a simple comparison of the language versions reveals that the German version – ‘Bösgläubigkeit im Sinne von Absatz 1 Buchstabe b) liegt vor, wenn’ – is framed in terms which are too categorical and, from the grammatical point of view, limits cases of bad faith to those described in the list in Article 21 (3). By contrast, the other language versions⁽²⁶⁾ all introduce an important nuance by adding the auxiliary verb ‘may’, which makes it clear that the list is describing situations by way of example and, accordingly, prevents the list from appearing exhaustive. In those circumstances, the German version should be interpreted in the light of the other language versions.⁽²⁷⁾

95. That literal interpretation of the text is borne out, in the first place, by the same teleological argument as that put forward with regard to the interpretation of Article 21 (2) of Regulation No 874/2004, concerning the perfunctory nature of ADR proceedings and the possibility that the panel members may not have legal training, which would have prompted the legislature to seek to help them by providing examples.⁽²⁸⁾

96. With regard to bad faith, it should be added that, given that the aim of Regulation No 874/2004 is to prevent or avert domain grabbing, the Community legislature sought to provide those panels with typical examples of the kind of conduct which it considers, in any event, to be inconsistent with good faith.

97. From the schematic point of view, good faith is also clearly required under point (c) of the first paragraph of Article 3 of Regulation No 874/2004, in the form of an affirmation attached to the request for domain name registration, as an element necessary for the validation of that request. Since, under point (c) of the first paragraph of Article 20 of Regulation No 874/2004, the registry may on its own initiative revoke a domain name for breach by the holder of the terms of registration, it follows that revocation for lack of good faith means that the registry must first have verified the existence of a situation indicative of bad faith; however, no limits are placed on the possible grounds for categorising conduct as being in bad faith. Given that the reference to bad faith for the purposes of registration takes the form of a general phrase, it is scarcely credible that the legislature would have conferred on the registry competence to interpret bad faith on its own initiative, free of any restrictions; but, if the list in Article 21(3) were regarded as exhaustive, the effect would be that the competence of extrajudicial or judicial bodies to interpret bad faith would be limited to the grounds expressly specified in the list set out in that provision.

98. The question raised by the referring court was nevertheless important in so far as that court doubts whether the claimant’s conduct corresponds to one of the situations expressly referred to in the list set out in Article 21(3). If those situations – which, moreover, reflect typical forms of domain-grabbing conduct – were exhaustive, the national court would be compelled to conclude that there had been no bad faith.

99. In the second place, the acceptance of other grounds for categorising conduct as being in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004 means that I must identify the relevant criteria against which to test the claimant’s conduct for bad faith.

100. In that regard, the Court has already explained that, in order to determine the existence of bad faith, it is necessary to carry out an overall assessment, taking into account all the factors relevant to the particular case.⁽²⁹⁾ Even though it gave that ruling in the context of a trade mark case relating to the interpretation of Article 51(1)(b) of Regulation No 40/94, there is nothing to prevent the same reasoning being applied by analogy. Both situations involve the acquisition of rights (whether a trade mark or the exclusive use of a domain name) through registration with an official registry.

101. The following factors, mentioned in the questions referred for a preliminary ruling, may be relevant for the purposes of determining whether the claimant acted in bad faith:

• the circumstances in which the trade mark was acquired: for the purpose of being able to request registration of the domain name in the first phase;

• the fact that the domain name is a German-language generic name; and

• the possibly abusive use of the ‘&’ character in order to influence the application of the transcription rules laid down in Article 11 of Regulation No 874/2004.

In relation to those factors, the following clarifications are called for.

102. It should first be noted that the fact that, by registering a trade mark in a Member State where it does not envisage any professional activity in connection with that mark, the sole intention of the proprietor of the trade mark was to ensure that it would be in a better position than its competitors at the time of the granting of the domain name does not, on its own, constitute proof of bad faith on its part.

103. Regulation No 874/2004 itself, by providing for the ‘sunrise period’, allows holders of prior rights, including registered trade marks, to request the domain name corresponding to that prior right and, in doing so, favours applicants who do not hold any such rights. Consequently, the circumstance of having secured a more favourable position cannot be regarded as indicative of ‘bad faith’ unless a combination of other factors were to demonstrate that that advantage would not have fallen to the claimant in normal circumstances and that that favourable situation is the consequence of conduct which it knew to be contrary to fair trading practices. It is, in fact, a matter of examining those other circumstantial factors which could prove bad faith on the part of the claimant.

104. Consequently, so far as the conditions for obtaining the trade mark ‘&R&E&I&F&E&N&’ are concerned, although it is permissible for the proprietor of a sign to register it in the country of his choice, the fact none the less remains that a trade mark registered in a country where its proprietor does not intend to use it in any circumstances – as seems apparent in the present case from the file which the referring court passed on to the Court – is not required to fulfil its essential function, which is to ensure that the consumer or end user can identify the origin of the goods or service.⁽³⁰⁾ Since the claimant is not present on the Swedish market, that trade mark would not protect any goods or service on that market.

105. However, that factor on its own is not sufficient for the conduct of the claimant in the main proceedings to be categorised as being in bad faith, in so far as – as has been pointed out – Directive 89/104 does not oblige the proprietor of a trade mark to use it for a period of up to five years after the date of registration. That said, the manifest intention, as in the present case, not to sell goods or services in Sweden – in particular safety belts, since it was intended to market tyres – may be a further indication that the trade mark was obtained for a purpose unrelated to its essential function or even to its other functions, such as that of guaranteeing the quality of the goods or services in question, or those of communication, investment or advertising.⁽³¹⁾

106. In that context, the registration in Sweden, a non-German-speaking country, of a word mark deriving from the German language merits particular attention.

107. Thus, that factor is undoubtedly such as to demonstrate that the trade mark fulfilled only a secondary, but necessary, function in relation to the purpose of obtaining the domain name. In terms of fair conduct, the claimant could not have registered the trade mark ‘Reifen’ in a German-speaking country, since generic word signs are devoid of any distinctive character, in particular if they are descriptive.⁽³²⁾ However, it is precisely in those countries that protection of the trade mark ought to have met the needs of the proprietor, since its operational market – the market in tyres – is limited, according to the referring court, to the German-speaking countries.

108. Admittedly, generic names are not excluded from the ‘.de’ or ‘.at’ registers, just as they are not excluded from the ‘.eu’ register.⁽³³⁾ However, since the claimant was unable to secure registration of the generic trade mark ‘Reifen’ for the German-speaking markets, where it planned to carry out its activity, it should have waited for the opening of the ‘landrush’ phase in order to try to secure its domain name on an equal footing with the other parties wishing to register that same name, in accordance with the ‘first come, first served’ principle,⁽³⁴⁾ a modern form of the Roman adage ‘prior tempore potior iure’.⁽³⁵⁾

109. As it is, by means of the device of registering a trade mark which it did not intend to use, the claimant merely avoided having to wait for the phase of general registration of domain names (‘landrush period’), to the detriment of the other parties interested in the same domain name, and thus contrary to the spirit of Regulation No 874/2004 which intended that the ‘first come, first served’ rule should apply during that period as well.

110. Lastly, account must also be taken of the claimant’s possibly abusive use of the ‘&’ character in order to influence the application of the transcription rules under Article 11 of Regulation No 874/2004.

111. The second factor which contributed to the claimant’s obtaining the domain name by avoiding the competition of the ‘landrush’ phase was the registration of the trade mark with the disproportionate and illogical use of the ‘&’ character. Thus, in the sign ‘&R&E&I&F&E&N&’, the ‘&’ character tends to lose its traditional meaning (‘and’, ‘et’) and become only a sort of backdrop or ornamental background to the word actually intended, a fact which would have justified its elimination, but not its transcription, at the time of registration.

112. Moreover, the large-scale registration of trade marks – 33 of them – in the Swedish register, all by the same process, using the ‘&’ character, may also be evidence of lack of good faith on the part of the domain name holder, in so far as those registrations could, as the case may be, match one of the situations specified in points (a), (b) or (d) of Article 21(3), which describe typical forms of ‘domain-grabbing’ conduct.

113. All those circumstances inevitably bring to mind the principle of ‘abuse of rights’, with regard to which the Court has already held that evidence of an abusive practice requires, first, a combination of objective circumstances in which, despite formal compliance with the conditions laid down by the Community rules, the purpose behind those rules has not been achieved and, secondly, a subjective element consisting in the intention to obtain an advantage from the Community rules by creating artificially the conditions laid down for obtaining that advantage.⁽³⁶⁾

114. In the light of the foregoing considerations, the answer to Questions 4 and 5 should be that, for the purposes of determining whether conduct can be categorised as being in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the situations specified in which are not exhaustive, the national court is required to take into account all the relevant factors specific to the case before it, including:

• the circumstances in which the trade mark was acquired, in particular the intention not to use it on the market for which protection was sought;

• the fact that the trade mark is a German-language generic name; and

• the possibly abusive use of the ‘&’ character in order to influence the application of the transcription rules under Article 11 of Regulation No 874/2004,

• in so far as the sole purpose of the registration is to be able to request registration of the domain name corresponding to the trade mark in the first phase of domain name registration (the ‘sunrise period’), as provided for in that regulation.