An employee refuses to transfer domain names wrongly registered in his own name

WIPO, Arbitration and Mediation Centre, March 15, 2019, No. D2018-2944, Théâtre du Gymnase Marie Bell SAS versus Mr. Erol Topal

 

This case illustrates the need for any company to define a clear policy for managing its domain names to ensure that these domain names are registered in the company’s name and remain under its control. If this is not done the company may lose some of its rights. Moreover, if an employee  registers domain names in his or her own name it could be difficult to recover these domain names.

The Théâtre du Gymnase Marie Bell, commonly known as the “Théâtre du Gymnase”, was registered in 1958. It is a Parisian performance hall which was classified as a historical monument in 1994.

In 2004, one of its employees registered the domain name <theatredugymnase.com> in his own name, but allegedly on behalf of the company. In addition, in 2018, he registered  four other domain names that include all or part of the company’s name: <theatre-du-gymnase.com>, <theatredugymnasemariebell.com>, <gymnasemariebell.com> and <letheatredugymnase.com>.

The day after these domain names were registered, the Théâtre du Gymnase noticed malfunctions on its official website located at www.theatredugymnase.com. No information was being displayed, not even the performances scheduled.

On October 25, 2018, the theatre fired the employee, on the grounds of his refusal to provide the codes to manage the official website. Subsequently, formal letters were sent but there was no response to these.

The Théâtre du Gymnase then filed a UDRP complaint seeking the transfer of the domain names.

The respondent, (now a former employee of the company), said that he retained the names because proceedings before the Labour Court were pending. He also claimed to have registered and managed a number of domain names for the complainant, without ever getting paid. He stated that in August 2018 an invoice of 36,000 euros was sent to the Théâtre, which acknowledged the due amount and indicated its intention to pay. However, the respondent has not received any payment because proceedings before the Labour Court were subsequently initiated.

Initially, the expert had to consider whether the complainant had trademark rights in its name, because ownership of a trademark is necessary to bring a successful complaint under UDRP.  Although the name “Théâtre du Gymnase Marie Bell” is not registered as a trademark, the company claimed to have rights in it, particularly due to its use as a company name, trade name and brand. The Expert therefore  considered that the use of this name is such that the complainant enjoys unregistered trademark rights, (on which a complaint may be based). Therefore, the likelihood of confusion between the disputed domain names and the complainant’s prior rights could be  recognised.

Regarding the question of the respondent’s rights or legitimate interest or bad faith use of the domain names, four of the disputed domain names were registered on the eve of the malfunctions of the complainant’s web site, after which it was discovered that only the respondent had access to site management and refused to provide the complainant with the codes that would allow such access.

In addition, these four domain names pointed to what appeared to be the site of a Turkish specialty restaurant, and the other pointed to what appeared to be the official website of the Théâtre du Gymnase, but which indicated that there would be no performance whereas the new official website accessible at the address “www.theatredugymnase.paris” showed performances were ongoing.

Thus, the expert noted that the use made of the disputed domain names disrupted the claimant’s activities.

For these reasons, the transfer of the names to the Théâtre du Gymnase, was ordered without prejudice to the decision that will be made by the Labour Court.

Although this is a case of “all’s well that ends well” for the Théâtre du Gymnase matters might have gone differently.  If for example the expert had taken the view that this was a dispute over payment of an invoice legitimately incurred by the respondent in compliance with the complainant’s express wishes, the decision could have gone differently.  The existence of a clear, unambiguous domain name policy should leave no room for doubt whether an employee is acting within defined guidelines or is acting contrary to an employer’s guidelines – and therefore is clearly in bad faith. Consquently, this case reflects the importance of establishing a naming policy internally, setting clear rules and best practices for the registration and management of trademarks and domain names, in order to avoid disruption and potential asset loss.