The UDRP dispute resolution process before WIPO’s Arbitration and Mediation Center allows action to be taken when a domain name infringes a trade mark, whether or not registered. This concept of unregistered trade mark is absent from French law but is characteristic of Anglo-Saxon laws. Thus, the user of a sign can be protected against infringements of this sign when it intends to use it as a trade mark.
The owners of a nightclub recently filed a UDRP complaint against the registrant of several domain names which included the words “bomba” and “ibiza”. The complainants claimed a trade mark right on the signs BOMBA IBIZA and LA BOMBA IBIZA whilst the respondents provided evidence of the use of these signs through a tweet dated January 2013.
Yet at that time, the nightclub did not bear the name of LA BOMBA IBIZA. The WIPO expert therefore considered that a tweet alone could not be sufficient to establish the existence of a trade mark right. Indeed, according to him it is unlikely that the name became a distinctive identifier in the time between the tweet and the registration of the domain name a month later. The sign could not be used to support the UDRP complaint, which was therefore dismissed.
With the arrival of new domain name extensions on the market, unregistered trade mark users will have to equip themselves to avoid cybersquatting.
Dreyfus & associés specializes in UDRP proceedings. Please contact us for details.