*Image generated by DALL E 3 Microsoft Version
In a noteworthy decision, AFNIC, the French country-code top-level domain name registrar, has transferred the rights of the domain name ‘porcelainefrancaisedelimoges.fr’ to the rightful owners of the French geographical indication (GI) ‘Porcelaine de Limoges’.
This ruling (decision FR-2023-03612) has profound implications for the protection of geographical indications in the digital realm.
Legal and factual Background of the case
The French government introduced a national system for the protection of GIs for craft and industrial products in 2014 (Law No. 2014-344 of March 17, 2014). This law led to a flurry of GI registrations, including the famed ‘Porcelaine de Limoges’. Producers of Limoges porcelain, with a rich history dating back to the 18th century, filed for GI registration on June 8, 2017, which was officially granted on December 1, 2017.
Simultaneously, an anonymous individual registered the domain name ‘porcelainefrancaisedelimoges.fr’ on February 24, 2017. This domain name, showcasing unrelated and possibly inappropriate content, prompted the Limoges porcelain producers to seek legal recourse.
The Dispute and legal proceedings
Asserting that the domain name infringed upon their rights, the claimants approached SYRELI, an alternative dispute resolution (ADR) system operated by AFNIC. The plaintiffs argued that the domain name registration was executed in bad faith, leveraging the pre-existing reputation and impending GI registration of ‘Porcelaine de Limoges’, widely covered by French media.
AFNIC’s Decision
AFNIC noted that the domain name closely resembled the registered GI, differing only in the addition of ‘French’. Consequently, AFNIC deemed the domain name as misappropriating and diluting the ‘Porcelaine de Limoges’ GI, leading to the transfer of the domain to the claimant.
Commentary and Implications
This case is remarkable for two reasons: the posteriority of the GI to the domain name registration and the basis of the dispute on a GI right.
The case raises significant questions about the applicability of ADR procedures when a GI is registered after a domain name. How should ADR panels weigh the reputation and recognition of a GI that was informally established but not legally registered at the time of domain name registration? Should the evidence of pre-registration reputation and intent to register the GI be considered sufficient grounds for transferring or revoking a domain name?
ADR panels might need to be equipped with more nuanced criteria for evaluating the ‘good faith’ intentions of domain name registrants, especially in cases where the registrant could reasonably have been aware of a well-known but yet-to-be-registered GI.
Secondly, domain name ADR systems in the EU and the UDPR system have not accommodated GIs, focusing mainly on trademark rights. However, France’s progressive posture in the protection of crafts and industrial products within domain names and has set a precedent. The Regulation (EU) 2023/2411now include provisions recognizing registered GIs in domain name disputes and explicitly protect GIs from cybersquatting.
This development is not just a technical adjustment in legal procedures; it reflects a broader shift in recognizing the value and significance of GIs in the global economy and digital world.
It recognized that a geographical indication, “Porcelaine de Limoges”, deserves the same level of protection as trademarks and company names in domain name disputes. This is a big deal and puts France at the forefront of internet protection, especially concerning intellectual property in the digital domain.
As legal practices continue to evolve, this case will serve as a critical reference for domain name and intellectual property law practitioners. Stay tuned!