What are the new provisions of the April 17, 2019 European Directive on copyright?

Written by Dreyfus03/09/2021

Aside from including related rights for press publishers and press agencies, and rebalancing relations between rights holders and content sharing platforms, the April 17, 2019 Directive strengthens the position of authors vis-à-vis assignees. These last provisions about copyright have just been transposed into French law.

The transposition marks a significant step forward in protecting creators and cultural organizations in the digital age. While cultural pieces of work are becoming more and more accessible online, this provision reaffirms the importance of copyright.

Copyright begets fair remuneration of artists and creative enterprises in the member states of the European Union. The Directive’s purpose is to establish a global framework, where intellectual creators, authors, content editors, service providers and users will all be able to benefit from clearer, modernized and adapted rules of the digital era. As such, the Directive aims to ensure that online press publishers and authors/artists receive better renumeration – especially when leading platforms such as Google News or Youtube use their work. The adoption of this Directive is the result of negotiations that lasted more than two years.

What are the new provisions of the Directive?

The Directive aims at modernizing the European Union copyright law, taking into account the increase in digital and cross-border uses of protected content. This directive mainly provides:

1) measures to adapt certain exceptions and limitations to the digital and cross-border environment, among which are exceptions concerning:

– text and data mining (TDM exception),

– the use of works in digital and cross-border teaching activities, in particular the accessibility needs of people with disabilities, and

– conservation of cultural heritage;

2) measures to improve licensing practices and ensure more extensive access to content, which consist of harmonized rules facilitating:

– the exploitation of works that are not commercially available,

– the extension of collective licensing contracts by collective management organizations to rightsholders who have neither authorized nor excluded the application of these mechanisms to their works,

– the negotiation of agreements to make works available on video-on-demand platforms (VoD platforms), and

– entry into the public domain reproduction of works of visual art at the end of the initial term of protection; and

3) measures to ensure fair market practices with respect to copyright, liability of content sharing platforms, and contracts for the remuneration of authors and performers.

Similarly, Article 15 of the said Directive creates a new neighbouring right for press publishers. Remember, neighbouring rights are exclusive rights, more recent than copyright, and are exercised independently of the latter. They were born from the need to make the auxiliaries of creation benefit from making their works available to the public. Finally, article 17 (ex-article 13) created a liability regime adapted for internet content sharing platforms, while establishing a new exception for the monopoly of rightsholders.

What are the new obligations of content-sharing platforms?

The targeted main players (Title IV of the Directive) are platforms for mass sharing of copyright and related rights protected content – such as such as Google, YouTube, Dailymotion, or Facebook. The Directive more precisely defines it as:

“The provider of an information-focused service, whose main objective or one of its main objectives is to store and give the public access to a significant quantity of copyrighted works or other protected subject matter that has been uploaded by its users, which it organizes and promotes for profit.”

There are cumulative criteria that determine their obligations. Platforms that have been active for less than three years and have an annual turnover of fewer than 10 million euros will be subject to reduced obligations. On the other hand, platforms exceeding this limit will be subject to a proactive obligation provided for by the Directive regarding works distributed without authorization. The Directive excludes from the liability regime non-profit online encyclopedias such as Wikipedia, non-profit educational and scientific directories, open-source software platforms, online marketplaces like Amazon, Cdiscount or eBay, and individual cloud storage services with no direct access to the public. With regard to the regime applicable to content sharing platforms falling within the above-mentioned scope, the most important thing is to have the rightsholders’ authorization, which allows copyrighted work to be available to the public through, for example, a license agreement.

Can platforms be exonerated from liability?

Platforms may be exonerated from liability if it meets the following three cumulative conditions:

– That it has “made its best efforts” to obtain permission from the rightsholder to release the work to the public,

– That it has “made its best efforts” “in accordance with high industry standards of professional diligence” to ensure the unavailability of the copyrighted work once the unauthorized communication of it has been reported by the rightsholder by means of “relevant and necessary information,“

– That it acted promptly to withdraw or block access to the work upon receipt of “sufficiently motivated” notification from the rightsholder.

Finally, the platforms must be transparent towards rightsholders about the measures taken within their area of responsibility. This Directive gives certain platforms greater responsibility for the content they publish. Meanwhile, the liability system for online selling platforms, where counterfeits abound, will not change. Their status as host or publisher will always determine their liability regime.

In France, in addition to the debates surrounding compliance with the Intellectual Property Code, it will be interesting to see to the court’s decisions in the months to come.

We are a law firm with a unique expertise in the exploitation of intangible assets. We keep you updated on issues related to intellectual property and the digital economy through articles written by the Dreyfus legal team.

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How are restaurants trademark portfolios evolving?

Written by Dreyfus02/08/2021

To protect a trademark and minimize the risk of potential legal action, restaurateurs should employ an ongoing research strategy, registration and monitoring.

What impact could the pandemic have on restaurant brand portfolios?

The pandemic has pushed restaurants to innovate. Delivery services, technological services, and even innovative uses of restaurant real estate are leading to an increase in trademark demands beyond traditional restaurant services.

Foodservice companies have expanded the use of “ghost kitchens” (also known as “dark kitchens” or “virtual kitchens”).

In ghost kitchens, chefs prepare food only for delivery or pickup without a seat for customers. A ghost kitchen can serve as a cooking space for multiple brands, allowing operators to expand their customer base without investing in a separate area for each brand.

The ghost kitchen concept also encourages experimentation because a brand can get started quickly with little additional cost.

The legal consequences arising from the different classes and descriptions of services requested by kitchens and brands continue to evolve. Regardless of what lies ahead, restaurants and related entities need to extensively think when filing for trademark protection and enforcing their rights.

The Covid-19 pandemic has put innovative pressure on the restaurant industry. As restaurants have changed or expanded their products and services since the start of 2020, their trademark portfolios have also expanded to include new classes of trademark registration.

How to effectively manage restaurants trademark portfolios?

In this context and after having created the name, the question of the company’s trademarks protection and international extension quickly arises, even for restaurants.

Today, there is a craze for trademark registration, which has a considerable impact on the strategy of their management by companies. It is increasingly complex to create a distinctive and solid brand or to maintain a monopoly on a word coveted by many.

In addition, legal risks have accelerated with e-commerce, market globalization and the company’s international exposure to the Internet.

As the demand for contactless food delivery grows, restaurants and related brands have adopted broad strategies, including partnering with ghost kitchens or selling food through temperature-controlled lockers.

At the same time, these new business areas have created an increased need to examine restaurant trademark portfolios and identify areas for which brands should be protected.

What precautions should you take to protect your IP rights?

It is of great importance to protecting your IP rights to take several precautions:

Ensure that you included confidentiality clauses in your contracts;
Provide for non-disclosure agreements;
Be vigilant on the terms of transfer of rights between the creator and the company.

It is necessary to establish a protection strategy in the real world and in the digital world to protect your trademark portfolio.

Why bet on the brand?

It is about obtaining an operating monopoly, which can be renewable indefinitely and will constitute the pillar in your marketing and commercial strategy.

It is necessary to register the trademark from the genesis of the project. Determine a limited but suitable territory is also of great necessity. Likewise, it is about thinking globally and digitally by protecting domain names when registering the trademark.

The domain name is an important asset!

Today, insurers identify the intellectual property of which domain names are a part as one of the top three risks facing businesses.

The domain name occupies a special place in that it serves as a vector for ever more sophisticated and varied frauds. Managing your trademark on the Internet is not just about filing and renewing but also building a strategy.

It is crucial to invest in protection and preventive defense strategy and also set up surveillance on your brand.

Finally, you must be particularly vigilant about the use that is made of your brand on the Internet to avoid any “bad buzz”, which would be particularly harmful to your reputation.

A restaurant’s brand portfolio is a true intellectual and economic investment that must be protected.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed of the current issues of intellectual property and digital economy through articles written by the legal team of Dreyfus & associés.

ABOUT THIS TOPIC…

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Transposition of the AVMS Directive in France: what impact on the audio-visual sector?

Written by Dreyfus29/07/2021

Directive (EU) No. 2018/1808 of the European Parliament and of the Council, adopted on November 14, 2018 and amending Directive 2010/13/EU (AVMS Directive), has (finally) been transposed into French law, via the Order of December 21, 2020. This directive is part of a context of international competition on the one hand and profound transformation of the audio-visual and the evolution of demand on the other hand.

Redefinition of the essential concepts of the 2010 European Directive

The Order deals with essential concepts that one needs to fathom to understand the issues at stake. First of all, what are audio-visual media services (AVMS)? There are two types:

Linear television services (traditional services);
Non-linear services, e.audio-visual content-on-demand services or media-on-demand services (MOS). These SMAD services allow the customer to choose both when and what they wish to watch.

The Order also calls into question certain principles, such as the old principle of media chronology resulting from a 1960 legislation. This legislation coordinated the diffusion of films, after their release in cinemas, to optimise their profitability.

Modernisation and adaptation of the rules to the transformation of audiovisual services

The Order transposing the Directive has implemented several measures aiming to ensure the effective contribution by market players and to protect both the minors and the public.

The system of financing national cinematographic and audio-visual creations has indeed been completely revised by the Directive. From now on, the country of origin principle applies: each EU Member State may exercise its production contribution regime to foreign VOD (Video On Demand) channels and platforms offering a service on the territory of that Member State.

While this principle is a leading point of the reform, the AVMS Directive also acknowledges the profound changes in multimedia by extending audio-visual regulation to video-sharing platforms, social networks and live video platforms. This way, Brussels wishes to protect minors against certain harmful content and harmonise the legal framework of the European audio-visual sector.

Reform of the 1986 Act and safeguarding the French cultural exception

France wanted to implement the directive and collaborate in the European project while defending the French cultural exception. The Order is mainly concerned with reinforcing the rules of transparency for service publishers and with establishing more complete objectives, such as the inclusion of the system of funding for production (particularly independent production) over time, but also the guarantee that French broadcasters and global platforms are on an equal footing.

Article 19 of the Order, therefore, now requires “publishers of television services and on-demand audio-visual media services aimed at French territory” “when they are not established in France and do not fall under the jurisdiction of France”, to financially contribute in the same way as French publishers do.

Article 28 substantially reforms the principle of media chronology and now allows the industry players to negotiate an agreement with the professional organisations within six months to reduce broadcasting delays.

Extension of the powers of the CSA and protection of minors

As platforms are now part of the regulatory landscape, the CSA has seen its competencies and powers broadened and, in particular, has been assigned two new essential missions: the accessibility of AVMS programmes, and the protection, in particular of minors, against content that is violent, incites hatred or constitutes a criminal offence. The CSA will then have jurisdiction if the head office or a subsidiary of the platform is established in France.

Furthermore, the CSA is also in charge of ensuring that publishers have issued guidelines of best practice (particularly regarding food advertising to which minors could be exposed) and highlighting audio-visual services of general interest on new audio-visual platforms.

In addition, the Order completes Article 15 of the 1986 Act by prohibiting in programmes not only incitement to hatred and violence but also a provocation to commit acts of terrorism, while entrusting the CSA with the task of ensuring that these provisions are respected.

If the Oder is already a significant step forward, the implementing decrees are just as important. In particular, on June 23, 2021, the audio-visual media services on-demand decree (or SMAD decree n°2010-1379 of November 12, 2010) was published in the French Journal Officiel, which probably represents the most valuable step in the project to modernise the financing of French and European audio-visual services. Among other things, SMADs will have to devote at least 20% of their turnover in France to finance the production of European or original French cinematographic and audio-visual works.

Finally, negotiations are underway between TV channels and producers’ representatives about reviewing a second decree known as “DTT” (Digital Terrestrian Television decree No. 2010-747 of July 2, 2020), which defines the production obligations of TV channels. The points discussed concern particularly the sharing of copyright on works between producers and TV channels and the lasting of these rights.

About This Topic…

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Fragrance and Intellectual Property: which protection?

Written by Dreyfus27/07/2021

Fragrance is nowadays a very important economic interest whether in art, luxury or marketing industry.

Faced with such interests, how does intellectual property try to protect it

The olfactory work: an intellectual work bearing the mind of the author?

The Intellectual Property Code aims, in a non-exhaustive way, the traditional forms of artistic expression (literary, graphic, musical creation, etc.), as long as they satisfy the conditions of originality and tangible form introduced by French law.

Beyond these traditional forms of artworks, case law studied a certain number of creations to determine whether they could be qualified as “intellectual work», such as recipes for example. Among them, olfactory work has been the subject of many discussions. In a world where materiality is omniscient, the fragrance tries, not without difficulty, to find a place in the “Panthéon des œuvres d’art”.

According to perfumers and other “aficionados”, fragrance is an art. However, the French Court de Cassation does not share the same opinion, remaining recalcitrant to the idea of elevating it to the rank of intellectual work and consequently, to grant the perfumer the author status.

Perfume fades, but this should not systematically exclude it from the copyright sphere. Indeed, the fragrance is by nature fluctuating, perishable. Yet, intellectual property does not, as a matter of principle, exclude ephemeral works from copyright protection.

The French Cour de Cassation assumes that the fragrance of a perfume which proceeds from the simple implementation of know-how, does not constitute within the meaning of articles L112-1 and L112-2 of Intellectual Property Code a creation of an expression form which can benefit from the copyright.

In other words, the Court assimilates this process of perfume creation to a simple implementation of a know-how, not protectable by French copyright, and rejects the identification of a form of creation through the sense of smell.

By taking this position, the French Cour de Cassation met with resistance from trial judges and doctrine (TGI Bobigny, 28 nov. 2006 ; CA Paris, 14 fevr. 2007 ; CA Aix-en-Provence, 10 dec. 2010).

Several judgments, on the contrary considered the fragrance as an olfactory form of creation whose originality cannot be denied. The judges also considered the fragrance originality through the novelty of its smell, the association of its scents. Faced with this craze, the Cour de Cassation reviewed its position on the matter but without opening the door to the protection for olfactory creations, considering that: copyright protects creations in their sensitive form, as long as it is identifiable with sufficient precision to allow its communication (Cass. Com., 10 déc. 2013, n° 11-19872).

The protection of fragrances by copyright remains a controversial debate. Only a reversal of case law could settle the issue in favour of perfumers, a position more than expected given the increasingly difficult protection of manufacturing secrets.

Today, it is only on the grounds of parasitism and unfair competition that the perfumer can rely on in case of unauthorized reproduction of the fragrance, as shown by the Lancôme decision. However, those grounds remain less advantageous than the infringement action, as it will be up to the plaintiff to prove the existence of a fault.

The fragrance: a protection by trademark law?

In the scope of industrial property, the fragrance can be apprehended and protected as a trademark.

Indeed, a fragrance can be registered as an olfactory trademark before the Intellectual Property French Office (INPI). Since olfactory memories are the longest to last, according to most scientists, more and more companies want to awaken this sense for the consumer by associating a pleasant smell with their products.

For a long time, this registration of an olfactory trademark was a problem since it could not be represented graphically. Since March 23, 2016, the “Trademark Package” removed this requirement in favour of the olfactory trademark.

Henceforth, the trademark may be protected as soon as it can be represented in any appropriate form through available technology. However, in practice, the registration of olfactive trademarks remains unusual because of its complexity.

Even if the graphic representation required has been deleted, it is still complex to represent the essence of a smell – a chemical formula cannot characterize a perfume. Furthermore, the trademark must be sufficiently distinctive to allow the consumer to identify the commercial origin of the goods and services covered by the smell; distinctiveness still difficult to demonstrate.

In parallel with trademark law, patent law can also be used to protect a smell, provided that it is new, industrially applicable and provides a solution to a concrete problem; conditions that are not necessarily easier to meet.

To conclude, fragrance protection is subject to many debates and difficulties. However, it is not impossible and some legal actors do not cease to claim this protection.

The importance of the olfactory cognitive memory, or the complexity and originality of the creation process, are the keywords defending the fragrance, subject of great legal attention.

How does the new Civil Code of the People’s Republic of China facilitate the protection of IP rights?

Written by Dreyfus21/07/2021

The Third Session of the 13th National People’s Congress (NPC) voted and passed the “Civil Code of the People’s Republic of China” on May 28, 2020. This law came into force on January 1, 2021.

The fundamental objective of this Civil Code is to facilitate the protection of people’s extensive civil rights and provide sufficient remedies for right holders whenever their IP rights are infringed upon especially when it comes to counterfeiting.

Apart from serving as a policy instrument for stimulating innovation, intellectual property (IP) rights have always been considered a significant category of private rights. The intellectual property regime, thus, is deeply rooted in and closely related to the civil law system.

While referred to by the Chinese press as the Encyclopedia of Social Life, the new Civil Law includes many provisions related to intellectual property (IP). At first read, the most striking IP provision is for punitive damages for intentional infringement, which will be potentially most valuable in patent infringement cases and especially in cases related to counterfeiting.

Article 1185 (out of 1260 articles) states, with reference to IP, “if the circumstances are serious, the infringed person shall have the right to request corresponding punitive damages”. This actually aligns with the newly amended trademark law that provides for increased punitive damages.

Article 63 of the trademark law, as amended in November 2019, increased punitive damages from three times to five times the amount of assessed damages when infringement is “committed in bad faith and the circumstance is serious.”

The United States has called China the “world’s principal IP infringer”. In a 2017 report, the US bipartisan Commission on the Theft of American Intellectual Property estimated that counterfeit goods, pirated software and the theft of trade secrets cost the US economy between US$225 billion and US$600 billion annually, not including the full cost of patent infringement.

China, meanwhile, has signaled that IP protection is a priority in its 14th five-year plan for 2021 to 2025, as part of its strategy to move towards self-reliance in critical technology.

Government economic planners detailed how they intended to strengthen the protection of IP and raise high-value patent ownership over the next five years, and Beijing is this year set to reveal its strategic plan to make China a global IP power by 2035.

In both the Chinese Patent Law and the Copyright Law, which will come into effect on June 1 2021, the applicable elements of punitive damages are “intentional infringement” and “aggravated circumstances“ according to the China Civil Code.

Therefore, punitive damages will be more actively applied by the Chinese courts when handling IP cases in the future.

The introduction of punitive damages into IP infringement disputes will help improve the protection of intellectual property rights, promote technology progress and innovation, and build a healthier market for investment.

The implementation of the Civil Law in China is not just a declaration to strengthen the protection of civil rights. It opens a new era by protecting IP rights.

The new Civil Code is demonstrating China’s resolute attitude toward malicious IP infringement, concrete articles and complementary civil principles could enhance the protection of IP rights in China.

In order to provide our clients with a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues with our articles written by the Dreyfus legal team.

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Reverse domain name hijacking

Written by Dreyfus09/07/2021

Reverse domain name hijacking constitutes an abuse of procedure. On this topic, the WIPO issued on April 4, 2021 a decision reminding Complainants of their failings: it was their duty to proceed to relevant checks before initiating the complaint and to build their case properly. The examiner was all the more severe given that Complainants were represented by counsel.

The complaint in question was filed by three applicants.

First Complainant is an Indian company notably specializing in the manufacture and sale of sanitary products and kitchen appliances. First Complainant was originally known as Hindustan Twyfords, but later changed its name to HSIL Ltd. in 2009. Second Complainant, Somany Home Innovation Limited, was incorporated in 2017. It manufactures and sells, among other goods, air and water purifiers, water heaters, air coolers. Like Second Complainant, Third Complainant, Brilloca Ltd, results from the split of First Complainant.

Having detected the registration of the domain names <hsil.com> registered on November 16, 1999 and <shil.com> on December 9, 1999, Complainants filed a complaint with the WIPO Arbitration and Mediation Center to request the transfer of the domain names.

Respondent is a UK registered company, established on October 7, 1998, which provides web development services to help small businesses gain visibility on the Internet, initially focusing on the health club and leisure equipment market. In addition to the main site « health-club.net », Respondent has registered a number of short acronymic domain names.

First Complainant owns trademarks for the sign « HSIL », the first of which dates from 2004. Complainants further argue that Somany Home Innovation is widely known by the sign « SHIL », the acronym that corresponds to its corporate name.

First and foremost, the panelist notes that the applicants have not submitted any evidence showing the use of the sign « SHIL » to the point of making it a distinctive identifier for their benefit. Therefore, the latter considers that they are in default concerning the proof of likelihood of confusion between the <shil.com> domain name and an earlier trademark in which they potentially have rights. On the other hand, the likelihood of confusion was recognized for the name <hsil.com>.

Then, regarding the issue of legitimate interest and/or rights in the domain names, the panelist takes into account the fact that Respondent registered the disputed domain names in 1999, before the alleged filing and use of Complainants’ « HSIL » and « SHIL » marks. As opposed to Complainants, Respondent has provided evidence to support its claims that the names were used as acronyms for « Sports / Health in London » and « Health / Sports in London ».

Besides, the disputed domain names were registered in 1999, many years before the filing of the HSIL marks and the registration of domain names containing « HSIL ». In addition, the Complainants have no trademark rights for the sign « SHIL ».

Also, Respondent has demonstrated a use of the disputed domain names in connection to a bona fide offering of goods and services.

The complaint is therefore dismissed.

In addition, the panelist found that the complaint constituted reverse domain name hijacking, an attempt to obtain a domain name by artificially proving infringement.

Complainants, who are represented by counsel, should have anticipated the weakness of their argument and the fact that the acronyms « Hsil » and « Shil » could not refer exclusively to them, as alleged in the complaint without any evidence.

The panelist also notes that Complainants tried to make it look like trademarks were rejected in India because of the « well-known status and enormous goodwill » acquired by their earlier marks. This, despite the fact that the defendant has proven that third parties have been able to obtain registration of trademarks for the sign « SHIL » in India.

The panelist also targets Complainants’ representative and denounces an « unfamiliarity with the UDRP » and raises the fact that the latter has listed the registrar as respondent simply because it had allowed the registration of an available domain name, even though it is not in its power to decide whether or not to allow a registration.

Source: WIPO, Arbitration and Mediation Center, April 4, 2021, Case No. D2020-3416, HSIL Limited, Somany Home Innovation Limited v. SHIL Ltd, Brilloca Limited v. GOTW Hostmaster, Get on The Web Limited, India

The Public Interest Registry creates an institute specialized in the fight against DNS abuse

Written by Dreyfus06/07/2021

The Public Interest Registry (PIR), registry for the .org top-level domain, launched the domain name system Abuse Institute on February 17, 2020. The purpose is to help protect Internet users from the threat of domain name system abuse.

The institute’s mission includes helping to identify and report DNS abuse, establishing best practices in the area of domain name system abuse and funding domain name system research.

The Institute’s activities cover three main areas:

– Innovation: Developing best practices for registries and registrars and funding research on cyber security and domain name system abuse;

– Education: Through the development of a library of available information and practices;

– Collaboration: The Institute will operate as a networking forum and sharing centre for stakeholders interested in these issues.

A hotline has also been created to assist registries and registrars with questions about DNS abuse.

Sources :

https://dnsabuseinstitute.org/about-the-dns-abuse-institute/

What are the suggested modifications to the UDRP?

Written by Dreyfus06/07/2021

Following the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.

ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.

It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.

Sources:

Overview: The Rights Protection Mechanisms (RPM) Review https://newgtlds.icann.org/en/reviews/cct/rpm

Phase: 1 Initial Report of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process :

https://www.icann.org/public-comments/rpm-initial-report-2020-03-18-en

The Vinci’s case: how to set up an effective domain name strategy?

Written by Dreyfus29/06/2021

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

In 2019, the US news agency Bloomberg appealed a decision of the AMF’s sanctions commission. The hearing before the court of appeal will be held this Thursday. Bloomberg was sentenced to 5 million euros for relaying information from a false Vinci press release.

A fake press release from Bloomberg

The American news agency Bloomberg is accused of having disseminated, in 2016, false information about Vinci without having verified it.

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

The false statement also indicates that the chief financial officer was fired. Less than a minute later, between 4:06 p.m. and 4:07 p.m., Bloomberg picked up the information and disclosed it on his terminal.

This press release had even been signed with the name of the real person in charge of Vinci’s press relations, while referring to a false cell phone number.

In defense, the defendants point out before the commission that the tone, the absence of spelling errors, the careful layout, the exact references to certain directors of Vinci or to its auditors, the mention of the real spokesperson for Vinci as well as the plausibility of the foot of the press release, which contained a link to unsubscribe from the Vinci mailing list and alerted the recipient to the automated processing of data, mentioning the contact details of the real correspondent Cnil de Vinci , did not differentiate this press release from a real press release established by Vinci.

The domain name issue in the false press release

The only inaccuracies in the false press release: the domain name of the false Vinci site to which the press release referred and the false mobile phone number of the “media contact”.

The fraudulent press release was also received by AFP, which did not follow up after realizing that this document had been posted on a mirror website, very similar to the real site but with a separate address (vinci.group and not vinci.com).

How to protect your domain name?

Domain names represent an essential intangible asset for companies since they allow access to websites related to their activity. Now, protecting the domain names associated with the trademark or the business of the company has become almost as important to the company as the protection of its brands.

In addition, domain names are the preferred medium for cyber-attacks which calls for increased vigilance on the part of owners and Internet users.

Phishing, fake president fraud, identity theft, fake job offers, theft of personal or banking data, whaling… frauds are numerous and are constantly adapting to technological progress;

Fraud is facilitated by the very protective provisions of the GDPR, which prevent the direct identification of the domain name registrant; technical service providers tend to rely upon the provisions of the GDPR and the LCEN to justify their inaction and allow fraud to continue;

There is a great risk of damage to the company’s image and reputation. Such fraud also has a significant financial impact, given the risk of embezzlement and money laundering.

The AMF’s Guide to Periodic Disclosure for Listed Companies (dated June

To protect your domain name from cybersquatters or competitors, it is recommended to also register the domain name as a trademark in addition to the reservation of the domain name.

It is possible, before making a domain name reservation and trademark registration, to check its availability, to avoid conflicts between domain names, trademarks or corporate names.

Domain names are now an integral part of the international economic landscape. Like industrial property rights and traditional distinctive signs, they are instruments of competition and intangible assets of companies. It is of course essential to have it for anyone who wants to exist in a market.

But care must be taken not to come into conflict with one’s competitors by using, even in good faith, distinctive signs close to theirs. Conversely, it is also necessary to enforce its own distinctive signs by not allowing third parties to appropriate signs close to its own in order to offer the same or similar services.

How to mitigate the risks regarding domain names ?

– Proceed to an audit of the corporate trademark and the company’s flagship trademarks among domain names, in order to map the risks;

– Set up a 7/7 watch of the corporate trademark among domain names, and a 7/7 or at least weekly watch on the company’s trademarks dedicated to goods or services;

– Set up watches on social networks such as Facebook, Instagram, Twitter and LinkedIn;

– Proceed with the preventive registration of domain names in risky extensions (such as .COM, .CO, .CM, .GROUP);

– Take preventive action(s) against potentially dangerous domain names;

– Define procedures and set up a crisis management unit to quickly react to infringements in case of emergency;

– Draft or update the company’s domain name policy (registration procedures, compliance with legal obligations, best practices) to be shared internally and with the company’s service providers and suppliers.

Cyber threats are more numerous and more complex and it has also become increasingly difficult to take action against registrants of disputed domains. More than ever, monitoring is required with the implementation of risk mapping and a defense strategy.

Dreyfus advise you in setting up the appropriate strategy to limit the risks related to domain names and to integrate industrial property assets in your compliance plans.

Domain name right : bona fide offer of goods or services

Written by Dreyfus18/06/2021

A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.

Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

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Domain name right : bona fide offer of goods or services

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