A famous applicant yes, but in the common name : the difficult proof of bad faith

Written by Dreyfus22/10/2020

(WIPO, Arbitration and Mediation Center, August 4, 2020, Case No. D2020-1543, Fundación Trinidad Alfonso Mocholí, Fundación de la Comunitat Valenciana v. Jack Zhang)

In a UDRP proceeding, the Complainant is required to establish that the disputed domain name was both registered and used in bad faith by the Respondent. To do so, it is imperative to establish the respondent’s knowledge of the Complainant’s rights.

The charity organisation, Fundacion Trinidad Alfonso Mocholi, filed a UDRP complaint because of the registration of the domain name <juanroig.com>. This association was founded by Mr. Juan Roig, who is particularly well known in Spain as a businessman. He presides over the largest supermarket chain in Spain and has already been received by the Spanish royal couple.

The association’s activities include programs to encourage the participation of children in sports activities. It carries out this activity under the name “Mecenazgo Deportivo Juan Roig”. It is also the owner of a semi-figurative Spanish trademark “MECENAZGO DEPORTIVO JUAN ROIG” registered on April 17, 2020 for goods and services in classes 16, 25 and 41.

The defendant in the action, located in the United States, is active in the purchase and sale of domain names. It reserved the domain name in question on October 27, 2014, before the registration of the plaintiff’s trademark. The disputed domain name does not refer to any site offering goods or services, but is offered for sale for an amount of 2,500 USD.

The expert admits the existence of a risk of confusion between the domain name and the subsequent trademark. Let us remind that the date of registration of the trademark is irrelevant for the analysis of the likelihood of confusion: only a “side-by-side” comparison is made. The expert takes into account, among other things, the fact that the expression “Mecenazgo Deportivo” is generic, since it means “Sports Sponsorship”.

The question of the legitimate interest of the defendant then arises.

The complainant states that it did not authorize the Respondent to reserve the disputed domain name. In return, the respondent argues that the practice of buying and reselling domain names is not illegitimate. He explains that a search on the LinkedIn site shows that there are more than 1200 members registered in Spain whose name is, or includes, “Juan Roig”. He argues that about 10% of the world’s population is on LinkedIn and infers that there are about 12,000 people in Spain who would be named Juan Roig. For him, the domain name is therefore composed of generic terms. This daring mathematical calculation is naturally not admitted by the expert, who notes the strong presence of people named Juan Roig in Spain or Latin America.

However, the expert believes that it would be necessary to demonstrate that the domain name is really used for its descriptive meaning in order to be able to refute a prima facie case of absence of legitimate interest. This was not the case here since the name is simply offered for sale, without any other use. The expert, therefore, asserts that the absence of legitimate interest is well demonstrated.

Furthermore, we may wonder about the descriptive use of a patronymic name, which seems complicated, unless a site is dedicated to statistics on the use of the name or to a specific person.

Regarding bad faith, the plaintiff argues that it was not a coincidence that the defendant registered the disputed domain name shortly after Mr. Juan Roig was ranked as the second wealthiest person in Spain.

The expert reminds that, in theory, bad faith will not be recognized when the trademark invoked in support of the complaint is subsequent to the registration of the disputed domain name. Except when it is proven that the defendant knew about the plaintiff and his emerging or future trademark rights.

The defendant purchases domain names in volume and could have been aware of the existence of the plaintiff if the domain name in question had been reserved as a result of its enter into the public domain (known as “drop catching”). But, this is a new registration. However, the expert notes that the defendant refused an offer to buy back the name, submitted by a third party, for the sum of 300 USD, which is almost 15 times higher than the price of a name reservation in <.com>. It is, therefore, clear that he wanted to make a more profitable profit from it.

Nevertheless, the defendant argues that he had never heard of the plaintiff or his trademark and that most of the publications that are supposed to support this fame are in Spanish language, which he does not speak.

The expert notes that some of these publications are in English and come from well-known newspapers such as the Wall Street Journal, but these publications are aimed at a limited audience, from the financial services sector.

The expert deduces that despite Mr. Juan Roig’s reputation, this is only demonstrated in Spain and he notes that his name is reasonably common among Spanish speakers.

The complaint is therefore dismissed.

Thus, the popularity of a public person is not sufficient to demonstrate the bad faith of the holder in the registration and use of a domain name. It is necessary to try to put oneself in the place of the reservist. If he comes from abroad, is he reasonably likely to know the person whose fame is being claimed?

Adaptation of decisions in case of identity theft’s suspicion

Written by Dreyfus21/10/2020

WIPO, Arbitration and Mediation Center, June 15, 2020, No. D2020-0646, Wintrust Financial Corporation v. Domain Administrator, Se PrivacyGuardian.org / Name Redacted

WIPO’s case law databases have no fewer than 170 hits when there is a research for decisions against “Name Redacted”, a term used when experts decide not to include the name of the defendant in the complaint. This occurs when the defendant appears to have impersonated a third party and in order to protect his or her personal data.

Recently, in a case involving the domain name <wintrustexpertoptions.com>, an obvious case of cybersquatting where the defendant tried to make the public believe that they were related to Wintrust Financial Corporation, the expert made the decision not to mention the name of the defendant in the decision.

In fact, in the course of the proceedings, the Center received an e-mail from a third party regarding the identity of the Respondent, indicating that it was a case of identity theft. This communication was forwarded to the parties by the Center, which also contacted the defendant at another e-mail address, which had not been taken into account at the start of the proceedings, to ask them if they wished to file a response to the complaint, which they did not.

Even if the issue of impersonation is not proven with certainty, the expert, as a precaution, chooses not to expose the name of the defendant in the decision.

However, the expert includes an unpublished annex to the decision that includes the name of the defendant. An annex that the Center may forward to the Registrar. This technique has also been used in other decisions (V. ASOS plc. v. Name Redacted, WIPO, No. D2017-1520; Allen & Overy LLP v. Name Redacted, WIPO, D2019-1148).

In addition to the procedural adaptations that identity theft generates, this decision is an opportunity to remind the right holders to be vigilant with the naming charter established for the registration of domain names. For example, an inactive name reserved in the name of a subsidiary could appear legitimate. However, it could be a case of identity theft. This is why it is imperative, in order to protect the company, its managers and its customers, to establish the rules of good conduct regarding the reservation of domain names. In particular, the e-mail address used must be a generic address in the name of the company, such as domainames@nomdelentreprise.com, and a dedicated registrar must be designated.

An e-mail or IP address is not an address within the meaning of EU law

Written by Dreyfus20/10/2020

In its decision of July 9, 2020 (case C-264/19), the Court of Justice of the European Union stated that neither an IP address nor an e-mail address are “addresses” under Article 8 of the European Union Directive on the enforcement of intellectual property rights.

Un litige opposant une société de distribution à YouTube

A dispute between a distribution company and YouTube

Constantin Film, a German film distribution company, noticed that some of the films it distributed were uploaded on YouTube without its consent. Therefore, the company turned to YouTube to obtain the e-mail and IP addresses of the users who had put this content online.
As YouTube and Google (Google owns YouTube) refused to share such data, the case went to German courts.

Article 8 of the European Union Directive on the enforcement of intellectual property rights provides for the possibility for right holders to request information from infringers and/or persons who have provided services to them, here YouTube, about “the origin and distribution networks of goods or services which infringe an intellectual property right”, including the “names and addresses” of the persons involved.

The German Federal Court has questioned whether e-mail and IP addresses should be considered “addresses” within the meaning of the Directive. The German Court decided to stay the proceedings and referred to the European Court of Justice for a preliminary ruling on whether such information falls within the meaning of the term “address” in the Directive 2004/48.

2. A definition of “address” that does not include IP and e-mail addresses

The answer of the CJEU is clear: EU law does not assimilate IP addresses and e-mail addresses with addresses.
The notion of address in the above-mentioned article must be understood in the sense of a postal address.

In its press release No.88/20 of July 9, 2020, the Court states that: “as regards the usual meaning of the term ‘address’, it refers only to the postal address, that is to say, the place of a given person’s permanent address or habitual residence” when used without any further clarification.
Nevertheless, the CJEU indicates that Member States may grant holders of intellectual property rights a more extensive right to information.
In the above-mentioned press release, the Court specifically mentions, regarding Article 8 of the 2004/48 directive, that “the aim of that provision is to reconcile compliance with various rights, inter alia the right of holders to information and the right of users to protection of personal data”.

This decision limits the range of action of right holders, for whom it is increasingly difficult to identify persons infringing on their assets. In addition to this issue of IP addresses and e-mails that do not fall within the scope of what is understood by “address”, The Data Protection Regulation, known as the GDPR, of April 27, 2016, has also complexifed the defence of rights on the Internet, as privacy has been increased and information on the holders of domain names redacted.

Webinar – Intellectual property questions for a successful digital transition

Written by Dreyfus01/10/2020

Webinar September 10, 2020 :

Intellectual property questions for a successful digital transition

How to secure and optimize your website? What precautions to take? How to defend your intellectual property rights on the Internet?

When you want to succeed in your digital transition, you have to ask yourself certain questions.

Whether you are thinking of selling online or strengthening your e-commerce, intellectual property is a key element.

Webinar replay

United States: what are the options to protect a trademark?

Written by Dreyfus31/08/2020

When a company wants to export its activity to the American market, it is essential that it think about protecting its brand. Indeed, the protection of a trademark being territorial, the registration of a trademark in France will have no value in another country. There are several ways to protect your trademark in the United States.

National registration

The registration of a trademark in the United States is done at the national trademark office: the USPTO (United States Patent and Trademark Office).

Types of registration

There are two types of registrations: the registration on the “Principal register” and the registration on the “Supplemental register“.

Registration in the principal register

A trademark registered in the principal register provides maximum protection because its owner is presumed to be the sole owner, which gives him the possibility to sue any person using an identical or a similar trademark.

Furthermore, registration in the principal register provides the owner with the advantage of benefiting, in the event of a dispute, from a presumption of validity of his trademark.

To register a trademark with the USPTO on the principal register, several conditions must be met, the most important being the criterion of distinctiveness.

Registration in the supplemental register

Registration on the supplemental register is available when a trademark is not considered sufficiently distinctive. Such a registration does not provide as much protection as a registration the principal register.

Modes of registration

There are also two modes of registration: filing based on Intent-to-Use and filing based on Prior Use

Intent-to-Use Application

This registration is made when the trademark has not yet been used on the US market. However, at the time the trademark is filed, the owner must start using the trademark in the United States within six months.

The protection of the trademark extends over a period of 10 years, renewable indefinitely.

Use in Commerce Application

This system makes it possible to register a trademark whose use is already effective. However, the applicant must provide proof of use of the trademark at the date of filing. This proof can nevertheless be difficult to provide.

The USPTO allows proof of use of a trademark when :

– the mark is inscribed on the goods or the packaging of the articles, or is related to the goods and services;

– and the goods and services to which the mark is affixed are sold in at least two states in the United States.

Protecting your trademark in the United States: is the Madrid System the best option?

The Madrid System allows a national trademark to apply for protection in a maximum of 122 member countries of the Madrid Union by paying a single set of fees, based on a single application. It is a single procedure that results in a bundle of national trademarks. This registration system is managed by the World Intellectual Property Organization (WIPO).

The use of this international trademark system has several advantages for the owner of a trademark: it is necessary to prepare only one file, to be submitted to a single office, in a single language and to pay a global fee. It is a simplified and centralized procedure, which generally leads to a reduction in costs. It also makes it possible at any time to extend the scope of protection to other member countries of the Madrid Union that were not initially designated in the application. It is particularly interesting when one wishes to extend the protection of a trademark in different countries.

The United States became party to the Madrid Protocol on November 2, 2003. It is therefore part of the Madrid Union.

When a company exports internationally and wishes to protect its trademark in different countries, it can choose, often rightly since it has many advantages, to use the Madrid System. However, this is not necessarily the best option to protect a trademark in the United States.

However, it should be remembered that the Madrid System does not bypass local laws, objections may be raised by national offices as well as third parties within each country concerned and no application is guaranteed to succeed.

International applications cannot be entered in the Supplementary Register.

In addition, for a period of five years, the international trademark is obligatorily attached to a national trademark, for example a French trademark. If the latter is cancelled, all designations in the different countries of the Madrid Union are cancelled with it.

Several options are therefore available to a trademark owner who would like to protect its trademark the United States. Depending on the level of its international exploitation and the characteristics of the trademark, the possibilities, costs and conditions of each system will have to be studied and the one that is most suited to the project will be selected.

Liability of online platforms operators : where do we stand?

Written by Dreyfus31/08/2020

Operators of online hosting platforms will soon know exactly what responsibility to assume for illegal or hateful content published on these platforms. The current climate seems to be very conducive to clarifying the nature and extent of their liability.

In this respect, two schools of thought clash: for some, it is necessary to impose obligations to control the content published on these platforms, but for others, this would reflect the attribution of a new role to these operators, which has not been given to them on a basic level.

“There would be a risk that platform operators would become judges of online legality and a risk of ‘over-withdrawing’ content stored by them at the request of users of their platforms, to the extent that they also remove legal content,” said Advocate General Henrik Saugmandsgaard Øe, who presented his conclusions before the Court of Justice of the European Union (CJEU) on July 20, referring to request for preliminary ruling a preliminary ruling made by the Bundesgerichtshof, the German Federal Court of Justice, on two disputes brought before the German national courts.

The first dispute (1) was between Frank Peterson, a music producer, and the video-sharing platform YouTube and its parent company Google over the users posting , of several phonograms without Mr. Peterson’s permission, to which he claims to hold rights.

In the second (2), Elsevier Inc, an editorial group, sued Cyando AG, in connection with its operation of the Uploaded hosting and file-sharing platform, over the uploading, again by users without its authorization, of various works to which Elsevier holds exclusive rights.

In said requests for preliminary ruling, it is a question of knowing whether the operator of content platforms such as YouTube, performs acts of communication to the public pursuant to Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, a directive that was invoked against YouTube.

The answer is negative, according to the Advocate General, who invites the CJEU to bear in mind that the legislator of the Union has specified that the “mere provision of facilities intended to enable or carry out a communication does not in itself constitute a communication within the meaning of [this directive]”. According to the Advocate General, it is, therefore, important to distinguish a person performing the act of “communication to the public”, within the meaning of the Article 3(1) of the Directive 2001/29, from service providers, such as YouTube and Cyando, who, by providing the “facilities” enabling this transmission to take place, act as intermediaries between that person and the public. On the other hand, a service provider goes beyond the role of intermediary when it actively intervenes in the communication to the public – if it selects the content transmitted, or presents it to the public in a different way from that envisaged by the author.

Such a conclusion would lead to the non-application of the Article 3(1) of the Directive 2001/29 to those people facilitating the performance, of unlawful acts of “communication to the public”, by third parties.

Moreover, it is a question of knowing whether the safe harbour – in the case of “provision of an information society service consisting in storing information provided by a recipient of the service” – provided for in the Article 14 of the the Directive on electronic commerce n°2000/31 is in principle accessible to these platforms (according to the Advocate General, it is).

This provision provides that the provider of such a service cannot be held liable for the information that it stores at the request of its users, unless the provider, after becoming aware or conscious of the illicit nature of this information, has not immediately removed or blocked it.

However, according to the Attorney General, by limiting itself to a processing of this information that is neutral with respect to its content without acquiring intellectual control over this content, the provider such as YouTube, cannot be aware of the information it stores at the request of the users of its service.

The CJEU will, therefore, have to rule on these issues in the coming months.

Furthermore, it should be noted that in 2019, the Union legislator adopted the Directive No. 2019/790, not applicable to the facts, on copyright and related rights in the single digital market, modifying in particular the previous Directive of 2001. A new liability regime was introduced in Article 17 for operators of online hosting platforms.

Sources :

https://curia.europa.eu/jcms/upload/docs/application/pdf/2020-07/cp200096fr.pdf

C-682/18 Frank Peterson v Google LLC, YouTube LLC, YouTube Inc., Google Germany GmbH

C-683/18 Elsevier Inc. v Cyando AG

Data protection : what are today’s real issues?

Written by Dreyfus28/08/2020

Consumers are now demanding more privacy and security in t he processing of their personal data.

What are the challenges for the data controller?

There are several challenges for the data controll

er – i.e. the legal or natural person who determines the purposes and means of a processing operation – to overcome at different scales:

– information management: reducing the data collected by establishing a precise commercial context, and reducing the risks by taking care of the contracts;

– communication with suppliers: being able to find solutions and evaluate each other;

– monitoring of data processing: setting up mechanisms for reporting data breaches or threats concerning suppliers (for example, if Easyjet has had a data breach, the data controller, operating in the same business sector as the airline, if notified, can redirect its decisions.

What are the risk management methods?

A more effective risk management includes precise identification of suppliers, prior audits when integrating new suppliers, automation of evaluation and control processes, and risk prevention to protect data.

What about cookies?

They are used to collect data. Their presence is materialized by the banners you find on websites that ask for your consent to collect certain data.

In summary, there are 3 types of cookies:

– cookies strictly necessary for the operation of the site;

– cookies intended to improve the performance and functionality of the site;

– advertising cookies (which will soon disappear, Firefox has already put an end to them, and Google has announced that Chrome will no longer use them in 2021).

How do I collect online consent?

Remember that in France, consent must be free, specific, informed and unambiguous (GDPR).

Nevertheless, in order to collect consent, the user must understand what he is consenting to. He must receive clear information (purpose and duration of the use of cookies, list of third parties with whom the information is shared etc…) and the data controller must be particularly attentive to the layout of his banner.

What should be the role of the DPO (Data Protection Officer) in a modern company?

If the company promotes ethics, innovation, data, then the DPO has a key role: they shed light on data collection, and bring their vision on risks from an individual’s point of view.

In the past, their role was purely administrative, but today it is different, the DPO accompanies the company on a permanent basis, but they cannot guarantee compliance on their own: they have to expand a web within the organization (with the digital or marketing departments in particular) in order to promote the essential principles.

What changes are taking place within companies, in terms of GDPR awareness?

When GDPR came into force, programs were launc

hed to raise awareness of it, , and it was necessary to mobilize the entities and ensure they had good skills (setting up e-learning internally, for example).

Despite the existing similarities in legislation, what differences persist and what are the challenges that companies have to face in this respect?

There are technical differences (in terms of data retention time, each country has its obligations) and very important cultural differences, the way in which people in different countries deal with these subjects depends on their history. Consequently, it is difficult to find “golden rules” (= harmonized rules).

How can organizations benefit from their compliance efforts?

One way to recognize that companies have done their job properly is through certifications, such as HDS certification.

Dreyfus helps you to comply with these new legislations.

How to protect plant varieties on an international level ?

Written by Dreyfus28/08/2020

Plant varieties offer many advantages to plant breeders, including a return on investment to cover research costs. Indeed, long years of work are generally required to develop new plant varieties (between 10 and 15 years for a large number of plant species).
Many breeders also wish to export internationally, but protecting plant varieties abroad is often complex.

European but also international legislations are harmonized by the application of the UPOV Convention (International Union for the Protection of New Varieties of Plants) which has 76 members.
Under this Convention, the breeder’s right is granted when the variety meets several conditions: novelty, distinctiveness, uniformity and stability. Finally, the variety must be designated by an appropriate denomination.

Protection in the European Union :

Filing of the application :

Since 1995 there has been a unitary Community title: the Community plant variety certificate. This title produces the same effects as a national title in each Member State.
However, this certificate cannot be cumulated with national plant variety certificate. Before applying, the breeder will therefore have to make a choice to protect his new variety.
The application for protection must be filed with the Community Plant Variety Office (CPVO). The French breeder can file his application directly with the CPVO but also with the INOV (National Plant Variety Office) which will forward the application to the CPVO.
In addition, there are certain requirements regarding the content of the application. For example, the following must be included:
– The names of the breeder and the representative of the procedure if any,
– Information concerning the botanical taxon (group of organisms),
– The provisional designation given to the variety,
– Information on the previous marketing of the variety,
– Information on previous applications for the variety,
– The deadlines relating to the priority,
– Proof of payment.

It is also necessary to complete a technical questionnaire and a form for the appointment of a procedural representative (if the applicant is not a within the European Union).

The criterion of novelty :
In order to meet the criterion of novelty, the varieties must not have been marketed for more than one year within the European Union and for more than 4 to 6 years (depending on the variety) outside the European Union. Beyond this period (known as the “grace period”), the variety will no longer be considered as new.

Protection during the Brexit :
The French holder of a Community plant variety right will not cease to be protected in the United Kingdom because of the Brexit. Indeed, the United Kingdom has announced the automatic creation of British plant variety titles which will be equivalent for all Community titles registered before the date of Brexit.

Extent of protection :
The extent of protection in the European Union is similar to that of the French legislation. Thus, the following will be subject to the holder’s authorization: production and reproduction, packaging for the purpose of propagation, offering for sale, sale or other marketing, export from the European Union, import into the European Union and storage for any of the above purposes.
The protection is also applicable to harvested products obtained without the consent of the breeder unless the breeder has had a reasonable opportunity to exercise his right and finally, it also applies to essentially derived varieties.

Protection during the provisional period:
During the provisional period (period between the filing of the application and the grant of the right) the breeder can assert his exclusive rights against all acts that would have required his authorization after the grant of the right.
However, the breeder will only be entitled to an “equitable remuneration”.

Counterfeit Prevention :

Finally, regarding customs surveillance to protect against counterfeiting, plant variety rights are included in the intellectual property rights subject to European Regulation 608/2013 of June 12, 2013 on the control by customs authorities of the enforcement of intellectual property rights.

International protection :
At the international level, legislation is largely unified by the UPOV Convention.
However, the Convention does allow national legislators to take into account national circumstances. The breeder must therefore inform himself in advance of any national specificities in order to ensure the protection of his titles in the best conditions.
Beware, that some countries are not members of UPOV !

The filing of the application :
During the filing of the application, the breeder has two possibilities:
– The filing of his application in each of the national offices;
– The filing of his application using the multilateral priority filing system UPOV PRISMA. This online system allows the breeder to file, through a single system, all his applications with the participating plant variety protection offices. However, one must be careful because some countries are not part of this UPOV PRISMA system such as South Korea, Japan or China (only for lettuce).
The breeder will also have to take into account the delays of the examination procedure which are on average 1 to 2 years. However, these periods can be much longer in some countries (sometimes more than 5 years for Japan or Russia for some fruit trees).

Protection during the provisional period :
During this provisional period, the breeder will also be protected, as in the case of the Community title, against acts requiring his authorization and will have the right to claim an equitable remuneration.

The criterion of novelty :
In the UPOV Convention, the grace period for the criterion of novelty, as for Community titles, will be one year within the country in which protection is sought, and 4 to 6 years outside that country. However, it is important to check the grace period in each of the countries concerned.

The extent of the protection :

Finally, the extent of the protection of plant variety titles is the same as that of the Community title in UPOV member countries due to the application of the Convention; provided that certain national particularities are taken into account.

If the UPOV Convention has allowed since 1961 to harmonize and establish a legislation protecting plant varieties in many countries, the breeder, wishing to develop internationally, will have to remain attentive to national legislations and their specificities.

To read more about Conflict between trademark and plant variety

Racism: when the news catches up with the brands

Written by Dreyfus20/08/2020

Uncle Ben’s, Eskimo Pie, Quaker Oats… Apart from the fact that they belong to the food sector, these brands have one thing in common: for a long time they did not seem to be a problem but current events, the #BlackLivesMatter movement and the evolution of society have rightly highlighted the racist side of their name, logo or slogan. These companies have made the decision to change their image and the brands they operate.

In order to be registered with the French office (INPI), a trademark must meet a lawfulness condition : it must not be contrary to public order and morality. Therefore, an obscene design, a Nazi insignia or a racist slogan will obviously be declared inadmissible at the time of their examination by the INPI services following their filings.

Independent assessment of the specialty

In trademark law, it is the sign itself that is taken into consideration. Thus, the lawfulness of the goods or services it covers is not relevant for assessing the conformity of a sign with the public policy. When assessing the conformity with the public policy and morality of the sign, the nature of the goods to which the mark is affixed or of the service which it designates is not relevant.

On the other hand, a mark deemed racist remains racist regardless of the nature of the goods or services it designates. The packaging mark “Paki” could have escaped the qualification of “contrary to public policy” with respect to the goods it designates. Indeed, the name of the mark is probably not intended to claim a racist idea, since it is a derivative of the verb “To Pack” meaning “to pack”. However, since the term “Paki” is also used to pejoratively refer to Pakistanis, the registration of this trademark would have contravened the principle of respect for public order and morality because of the racist reference implied by the trademark.

Assessment in regard to the relevant public

A trademark’s conformity to the public policy, and by extension its racist character, is determined by its potential to shock the public with which it will be exposed to. By “public”, we obviously mean the targeted consumers but also other people who, without being concerned by the said goods and services, will be exposed to this sign in an incidental manner in their daily lives. In this respect, the “Paki” trademark refused in the United Kingdom, where the racist term is very common, would probably not have caused the same unease in a country where this racist insult is not used.

It might also explain why trademarks such as Uncle Ben’s or Quaker Oats have not been considered racist at the time of their registration and for years to come. Intended for a predominantly Western audience and distributed in countries where “ordinary racism” has long been normalized, the public they were aimed at was not “shocked” by their image.

This situation is similar to the one of the Banania brand with the slogan “Y’a bon Banania”, vocalized by a Senegalese skirmisher. The slogan, meaning “It’s good” (C’est bon) in broken French, perpetuated, according to anti-racism associations such as the Movement against racism and for friendship between people (MRAP – Mouvement contre le racisme et pour l’amitié entre les peuples), the racist and denigrating stereotype that a black person was not capable of speaking French correctly. Until the 1970s, the slogan was commonly used by the brand. On May 19, 2011, the Versailles Court of Appeal ruled in favour of MRAP in a decision in which it required Nutrimaine, the company that owns the Banania trademark, to stop selling any product bearing that slogan.

Companies owning the Uncle Ben’s, Quaker’s Oats and Eskimo pie brands have announced that they will remove or change their visual identities that perpetuate racial stereotypes. When it comes to trademark law, the assessment of the racist character by trademark offices is becoming more meticulous.

Bringing a lawsuit does not necessarily preclude the UDRP procedure.

Written by Dreyfus05/08/2020

Usually, when a legal action is brought in the margins of the UDRP proceeding, the experts refrain from any decision on the merits and invite the Parties to settle their dispute before the court. However, whether or not to make a decision on the merits is left to the discretion of the expert.

Here, the dispute is between Associated Newspapers Limited from the United Kingdom on the one hand, and a natural person from Pakistan, Mr Makhdoom Babar, on the other. Associated Newspapers, the applicant, publishes the Daily Mail and The Mail newspapers. The Applicant claims that in November 2019, each issue of the Daily Mail sold more than one million copies.

The Respondent, Mr. Babar reserved the domain name <dailymailpk.com> on February 22, 2019.

The latter has repeatedly requested an extension of the time limit to file a response to the complaint, referring to the Covid-19pandemic as a justification for this request. Finally, the Respondent did not file a submission on the merits but indicated that it had filed a lawsuit in Pakistan to block the UDRP proceeding. He provided a document mentioning the complaint and indicated that the next hearing would take place on May 22, 2020.

The expert points out that they has the power to either stop the UDRP proceeding or not, when there exists a legal action in relation to the domain name at stake. The expert mentioned that many Panels in this situation refuse to suspend or terminate the procedure to avoid an indefinite delay in the decision. Especially when the legal action was introduced after the UDRP procedure, with the aim of disturbing it.

Following these preliminary remarks, the expert notes that there is no guarantee that the legal action will resolve the domain name issue. In fact, there is nothing in the file to show that the defendants in the legal action have been served with it or that they have agreed to submit to the jurisdiction in question. Furthermore, the court has not taken any action following the alleged hearing on May 22, 2020.

In addition, the action has not been brought to court in Massachusetts, United States, where the Registry Office is located. Thus, the Registrar may not enforce the decision in Pakistan.

Therefore, the expert decides to rule on the complaint and orders the transfer of the domain name to the applicant. To do so, he takes several elements into account. Firstly, the Complainant and the Respondent have already crossed paths in the past, since the Complainant had filed a complaint against them, concerning the domain name <dailymailnews.com>.

Secondly, the site set up by the Respondent on the name <dailymailpk.com> bears strong resemblances to that of the Complainant, to the extent that it cannot be a matter of coincidence alone, but rather of a desire to attract Internet users to its site by suggesting an affiliation with that of the Complainant. Thirdly, no articles have been published on the site since February 24, 2020, the date when the applicant was notified of the complaint. Finally, the expert notes that, in view of the circumstances, the defendant could not have been unaware of the existence of the “DAILY MAIL” trademark, which enjoys a great reputation.

Thus, the legal action does not per se obstruct the UDRP procedure. Nevertheless, it should be noted that in this case the defendant was a proven cybersquatter, at the origin of the legal action, initiated after the filing of the UDRP Complaint and in order to obstruct this procedure. Experts tend to react differently when the legal action precedes the UDRP action and especially when the dispute is between former trading partners. It is therefore necessary to remain vigilant before opting for the UDRP course of action.

Dreyfus