Only a few days apart, two sections of the Paris Court of First Instance respectively cancelled the French trademark “Vente-Privee.com” and acknowledged its notoriety.
Vente-privee.com is a company specialized in private and exclusive sales through its website www.vente-privee.com. This site is one of the leaders of online private sales in France (“vente privée” literally “private sale”). The company owns the eponymous trademark “Vente-privee.com”, which was recently subject to contradictory rulings by the Court of First Instance of Paris (Court of First Instance of Paris, 3rd chamber, 1st section, November 28, 2013 ; Court of First Instance of Paris, 3rd chamber, 3rd section, December, 6, 2013).
The trademark was disputed by Showroomprive.com, another private sales company. They requested the cancellation of the trademark on the grounds of lack of distinctive character. On November 28, 2013, the Court ruled that the terms used were generic as of the trademark registration in 2009, and only descriptive of the activity of private sales. Therefore the Court held that the trademark did not acquire distinctivity through use. The court pronounced the cancellation of the trademark in respect of the services covered in class 35.
Only a week after that ruling, another section of the same chamber of the Court acknowledged the notoriety of the trademark “Vente-Privee.com” in another case. The company had filed an action against the holder of three domain names highly similar to its trademark and pointing to parking pages listing competitors. On December 6 2013, the Court held that the defendant had registered these names with the sole purpose of trading on the goodwill and reputation of the trademark. The Court concluded to trademark infringement and unfair competition, and acknowledged the notoriety of the distinctive sign “Vente-privee.com” as trademark, company name, trade name, trade sign and domain name.
Vente-privee.com appealed the first decision. It can be hoped that a harmonization will be made by the Court of Appeal.
These decisions enlighten the risks and weaknesses of the trademarks composed of generic terms.
It should be noted that French Courts seem to have adopted a restrictive position in respect to this kind of trademarks.
In another recent case, the Paris Court of First Instance (Court of First Instance of Paris, 3rd chamber, 1st section, November, 28, 2013) cancelled the “Argus” trademarks of the claimant for lack of distinctivity. It seems the Court is ruling harshly to remind the applicants to be very careful as to the descriptive character of their trademark. Legal certainty outweighs freedom of enterprise.
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.
The Court of First Instance of the European Communities adopted a severe stance on September 16, 2013, concerning the Ballon D’or v Golden Balls (TPICE n°T-437/11 and n°448/11). It held that the two signs do not create any likelihood of confusion within the mind of the relevant public because there are no visual or phonetic similarities between them. The signs differ from one another in terms of language. It retains solely a weak conceptual similarity requiring a preliminary translation of word marks.
According to established case law, a simple conceptual similarity between two trademarks concerning identical goods can create a likelihood of confusion provided that the prior trademark has a high distinctive character. However, the trademark ‘Ballon d’or’ does not have a high distinctive character. This jurisprudence is thus not applicable.
The owner of the trademark ‘Ballon d’or’ has filed an appeal to the Court of Justice of the European Union on grounds that the Court has not taken the reputation of this trademark into consideration and has not examined any possible relation between the two trademarks. To be continued…
The new gTLD program is now fairly advanced and the launches follow one another in rapid succession. To date, ICANN has signed over 400 registry agreements with applicants: 248 gTLDs have already been delegated in the Internet’s authoritative database (known as the Root Zone) of domain names.
Three Sunrise periods will terminate on April 28 (social, review and futbol) and four between April 29 and May 3 (wien, qpon, works, expert).
Amongst the gTLDs currently being launched, several of them may be useful to promote marketing strategies, particularly geographical gTLDS (london, nyc, cologne, wien). Other gTLDs such as .expert, .partner or .services are interesting in many ways. Registration rules are entirely open for these gTLDS. In order to avoid cases of harmful cybersquatting, we recommend the preventive registration of your trademarks by taking advantage of the Sunrise period.
We remind you that in order to participate in Sunrise periods, trademarks must be registered with the Trademark Clearinghouse (TMCH) and you must have the corresponding SMD files.
First conclusive results of Trademark Clearinghouse
Trademark Clearinghouse does not offer absolute protection but is highly effective nonetheless. By the end of March, TMCH said it had sent around 500,000 notifications to registrants notifying them of a potential case of cybersquatting. Only 25,000 of them, i.e. 5%, ignored these warnings.
As a reminder, the TMCH has two main functions:
To notify the trademark owner and the registrant of potential cases of cybersquatting;
To give a priority right for the registration of trademarks in the new gTLDs during the Sunrise period.
Donuts gTLDs
The Donuts program ended its first Sunrise period at the end of last month with .solar, .coffee, .international, .house and .florist. You will find below a list of current and forthcoming Sunrise periods:
Sunrise from February 25, 2014 to April 26, 2014: proposed gTLDs are: .COOL and .WATCH
Sunrise from March 4, 2014 to May 3, 2014: proposed gTLDs are: .WORKS and .EXPERT
Sunrise from March 11, 2014 until May 10, 2014: proposed gTLDs are: .FOUNDATION and .EXPOSED
Sunrise from March 18, 2014 to May 17, 2014: proposed gTLDs are: .VILLAS, .FLIGHT, .RENTALS, .CRUISES and .VACATIONS
Sunrise from March 25, 2014 to May 24, 2014: proposed gTLDs are: .CONDOS, .PROPERTIES, .MAISONS and .TIENDA
Sunrise from April 1, 2014 to May 31, 2014: proposed gTLDs are: .DATING, .EVENTS, .PARTNERS and .PRODUCTIONS
Sunrise from April 8, 2014 to June 7, 2014: proposed gTLDs are: .COMMUNITY, .CATERING, .CARDS and .CLEANING
Sunrise from April 15, 2014 to June 14, 2014: proposed gTLDs are: .TOOLS, .INDUSTRIES, .PARTS, .SUPPLIES and .SUPPLY
Sunrise from April 22, 2014 to June 21, 2014: proposed gTLDs are: .REPORT, .VISION and .FISH
Sunrise from April 29, 2014 to June 8, 2014: proposed gTLD is: .SERVICES.
Donuts also maintains its Early Access Program. This program started on April 23 for the gTLDs .CHEAP, .ZONE, .AGENCY, .BARGAINS and .BOUTIQUE and will start on April 30 with respect to .COOL and .WATCH. The Early Access Program is a period that offers fixed price names each day on a “first come-first served” basis; prices vary from $ 10,500 on the first day to $ 125 on 5th, 6th and 7th days.
Sunrise period for new geographical gTLDS
The Dot London Domains registry offers a Sunrise period for .LONDON from April 29 to July 31. A physical presence in London will initially be mandatory for the registration of domain names. The gTLD will later be opened unconditionally.
The NetCologne registry of gTLDS .COLOGNE and .KOELN will open the corresponding Sunrise periods on June 12, 2014.
Sunrise period for.ARCHI
StartingDot, which will offer inter alia gTLDs .SKI, .ARCHI and .BIO, opened a Sunrise period for .ARCHI which will end on June 8, 2014.
.ARCHI targets architects and their firms. .ARCHI aims to put under one roof a wide community of architects and architectural firms throughout the world.
Sunrises for new non-Latin’s gTLDs
Sunrise from April 2, 2014 to June 2, 2014: the proposed gTLD is: 世界 (which means “world” in Chinese)
Sunrise from April 7, 2014 to June 6, 2014: the proposed gTLD is: ДЕТИ (which means “children” in Russian)
Sunrise from April 22, 2014 to May 22, 2014: the proposed gTLDs are: .संगठन (which means “organisation” in Hindi), .机构 (which means “office” in Chinese) and ОРГ (which means “org” in Mongol)
The Chinese gTLD 商城 (“commercial complex”) will be opened in Sunrise mode as from May 6.
Dot trademark TLDs
The Specification 13 to registry agreement was adopted in Singapore at the last meeting of ICANN in late March. It exempts registrars of new gTLDS corresponding to trademarks (such as .chanel and .hermes) from opening a Sunrise period.
The registration of domain names in new gTLDs (new gTLDs)
As of 24 April, the five gTLDs with the largest number of registrations were as follows:
.GURU 52,084 registrations
.BERLIN 46,613 registrations
.PHOTOGRAPHY 33,112 registrations
.EMAIL 24,598 registrations
.LINK 22,384 registrations
In total, around 580,000 domain names carrying new gTLDS have already been reserved.
The second-hand market of new gTLDs
Sedo, an online marketplace for the sale of domain names, reported 513 transactions for an amount of around one million dollars.
The highest sales of Sedo this week were as follows:
fun8.com, sold for $25,000
gewerbeflächen.de sold for €16,000
Among the new gTLDs, the domain name <chinese.club> was sold for $13,750
Ten percent of the latest sales are .club domain names :
chinese.club $13,750
toys.club $12,500
meet.club $1,.500
talk.club $10,000
russia.club $10,000
black.club $10,000
UDRP proceedings
Since the launch of new gTLDs, cybersquatting has become more frequent. UDRP decisions have been made in relation to domain names using .CLOTHING, .HOLDINGS, .DIAMONDS, or even .CEO and .GURU.
It is therefore important to monitor closely new gTLDs. In order to avoid any cybersquatting, we recommend the registration of your trademarks with TMCH as well as the global monitoring of trademarks amongst domain names.
ICANN 49 Singapore
Several major announcements were made in Singapore:
Name Collisions
The Name Collisions are, in summary, terms that registries of new gTLDs will not be able to offer for sale as they may imperil the security and stability of the Internet. The terms which ICANN does not want to see registered may be highly valuable. Yet, ICANN remains cautious and wants to see first how the Internet’s authoritative database of domain names will “digest” all these names.
Replacement of WHOIS
The structure of WHOIS, an identity sheet of domain names, is under review. ICANN wants to make it more relevant and accurate. A task force will deliver the conclusions of its study at the next meeting of ICANN in June this year. The WHOIS will likely be replaced by RDS (Registration Directory Services). RDS would replace WHOIS which is too uniform and less adapted to current practices (frauds, data mining etc.) and would allow a genuine verification of the identify of registrants while relying on a flexible system, adapted to the legislations of various countries, particularly with regards to data retention (see below).
Governance
The NTIA, a U.S government agency which manages part of the Internet has announced its intention to transfer its powers to a new multi-stakeholders global governance scheme, which will be more open and transparent. The transition should be completed by August 2015. ICANN has announced in Singapore that it will focus on the process and the scope of the transition and on how to address the needs of the future stakeholders.
Data Retention
The agreement between the ICANN and registrars– the RAA – signed in 2013, stipulates that the latter must retain for two years all data concerning domain names holders. This is in breach of European law, which imposes a maximum duration of 1 year. ICANN has therefore set out exceptions for Europeanregistrars.
2nd phase of applications for new gTLDs
ICANN had undertaken to open a new phase of applications for new gTLDs. The issue was discussed at the meeting in Singapore but no deadline has been set yet.
The next meeting of ICANN will take place in London in July 2014.
Article 4 of the Convention of Paris dated March 20, 1883 provides that the right of priority allows the trademark owner of the first trademark application duly filed in one country to benefit from a period of six months to extend its protection in other countries by means of filing known as priority claim. It has been incorporated in Article L 712-12 of the French Intellectual Property Code.
Contrary to traditional beliefs, the function of the right of priority is not to retrospectively trace back the priority claim as from the date of the first filing of the application. Indeed, acts of use during the priority period by a third party cannot be qualified as an infringement. It is only from the date of the filling application of the priority claim that the trademark owner will be able to sue counterfeiting third parties for infringing his rights or for illegal exploitation its trademark. However, during the priority period, the trademark owner is protected against all applications or usages of similar or confusing signs. Intermediary rights claimed by third parties cannot be invoked during this period.
Nowadays, the right of priority encounters uncertainties concerning its applications and effects. The diverging solutions proposed by Offices and Courts evidence this fact. For economical and practical reasons, the right of priority is nonetheless relevant since it assures the protection the holder’s rights and balances between the interest of the applicant and third parties.
Since arrival of new gTLDs, domain name collisions are more frequent. Name Collisions are nomenclature issues likely to arise from the naming system (DNS) between new gTLDs and gTLDs used in private naming system. In fact, these names are used in various Internet protocols and it might lead to confusion.
Consequences of Name Collisions are significant:
Requests addressed to resources in private networks end up questioning the public DNS and hence, “enter into collision” with new delegated gTLDs and vice versa;
The system of a corporate’s email might route emails towards the wrong server;
Internet users might believe that the researched website does not exist.
On 26th February 2014, ICANN has published a study on the way risks of collisions could be prevented as regard to the new gTLDs. The report focuses on a mechanism of “controlled interruption” of the domain names causing the collision.
On the same day, Verisign replied to the study. The well-known American considered the study as ironic since “ICANN specifically precludes the delegation of domain names on the SLD block lists, [while] dozens of them were actually registered and delegated”. However, Verisign indicates that he is not worried about domain names causing collisions but rather about domain names which might have been delegated or registered while they were not supposed to.
ICANN has added that it will receive commentaries on the study till 21st April 2014. ICANN’s optimism concerning new gTLDs has been dragged down by Verisign. Observations of other Internet actors should have largely been influenced by that of Verisign.
Excessive negative observations would undoubtedly plead in favour of a resurgence of ICANN, recently brought by the European Union.
On February 13, 2014, the Court of Justice of the European Union issued a long-awaited judgement in the field of copyright law(C-466/12). The issue concerned whether the use of hyperlinks towards protected works available on another website constituted a copyright infringement of the content.
The Court has clearly ruled in favour of free movement of contents online. Indeed, it considered that a website owner can use hyperlinks to redirect protected works freely available on another website without authorisation of the copyright holders.
According to the Court, it is not an act of communication to the public or a disclosure of a work for the public to have access. The communication should indeed have been addressed to a new public; in other words, a public who was not targeted by the copyright holder upon the authorisation of initial communication. However, as per the assumption raised by the Court, different links may target same categories of users as those targeted by the copyright holder upon the authorisation of initial communication. There is no new public.
In the contrary, if the hyperlink found on a website enables users to divert the restrictions set up by the website to a protected content limiting access to restricted public, an action for infringement can be filed. In fact, it does not concern the targeted public upon the authorisation of the initial communication and consequently, copyright infringement must be claimed.
Following this judgement, one can speculate in which circumstances the responsibility of a hyperlink provider can be engaged when the hyperlink directs to contents infringing copyright.
Outstanding client service has always been a core value at Dreyfus. We have followed closely technological developments and successfully adapted to offer ever more innovative services over the years.
The Dreyfus IPweb platform allows you to better manage your trademarks and domain names portfolios, to instruct and monitor the progress of your files on a daily basis. Dreyfus also offers cutting edge trademark and domain name monitoring services.
Did you know? New gTLDs are replacing the conventional .com and, .fr gTLDs. Register the names of your corporate executives with the .ceo gTLD before it is too late! You may also want to register domain names with gTLDs that have a strong and relevant marketing impact. A .club extension may thus help foster customer loyalty and integrate them around your trademark.
Current news: Over a third of all new gTLDs will be trademarks (e.g. .chanel). ICANN, the Internet regulatory authority, recently authorised these trademarks to sign the registry agreement. They will be exempt from the Sunrise period reserved specifically to trademarks. As a second round for applications for new gTLDs is planned, it is recommended to consider opportunities to hold a new TLD and to think about its positioning with regards to existing TLDs.
In this digital world, trademark infringements are increasing and ever shifting. To enable you to manage your digital presence, Dreyfus now offers trademark monitoring on various social networks and on mobile app stores.
Registering a trademark with the Trademark Clearinghouse (TMCH) enables you to be notified of any cybersquatting of your domain names and grants you a preferential right in the Sunrise period for the registration of your trademark with the new gTLDs. Dreyfus is accredited by TMCH and can assist you with the registration and monitoring of your trademarks within the new gTLDs.
Did you know? Over 1000 new gTLDs will soon be available which will revolutionise the Internet. It is thus essential to establish an appropriate defence strategy to ensure that you always remain visible online.
Current news: the NTIA, a U.S government agency which manages part of the Internet has announced its intention to transfer its powers to a new multi-stakeholders global governance scheme, which will be more open and transparent.
The foundations of the digital revolution have been in place for more than 20 years and the technological advances are well known. But they will have an economic and social impact for many years to come and will revolutionise our society In order to have a better understanding of tomorrow’s world and to better anticipate your needs, Dreyfus regularly attends ICANN meetings. Find news on all these current events on our blog or on Facebook or Twitter.
With a dynamic team of experienced and specialised lawyers, Dreyfus is known as one of the best law firms worldwide in the field of Intellectual Property. The firm was recently honoured by the World Trademark Review and The Legal 500 and it was designated as “Boutique IP Law Firm of the Year” by Legal Awards 2013.
Did you know? The UDRP procedure allows you to easily recover a domain name reproducing or imitating your trademark. Dreyfus specialises in these procedures and has successfully won several hundreds for its clients thanks to its high expertise in the matter.
The entire Dreyfus team and I would like to thank you for your continued interest in our services and for the trust that you place in us everyday for the protection and promotion of your innovations.
In the forthcoming years, Dreyfus will endeavour to assist you in all your projects with the same level of expertise, responsiveness and passion.
Created in 2006 as a result of the merger between Mittal Steel and Arcelor, ArcelorMittal is a worldwide integrated steel group represented by its media astute CEO, Lakshmi Mittal. The latter’s name is at the heart of URS (Uniform Rapid Suspension) proceedings, a procedure specifically implemented for the launch of the new gTLDS.
The gTLD .ceo meaning “chief executive officer” has been available to the public since March 26th, 2014. The domain name mittal.ceo was registered as soon as the gTLD became available. The registrant also created various email addresses including ContactMe@Mittal.CEO. Since the trademark MITTAL is registered at the Trademark Clearing House (TMCH), ArcelorMittal was immediately notified of cybersquatting. The company took action on the same day by filing a request for the suspension of the domain name at the National Arbitration Forum (NAF).
In its decision of April 4th, the NAF panel held that all the conditions of the URS proceedings are met. Firstly, the domain name was identical to the applicant’s trademark MITTAL. The gTLD was not found to be relevant, which is in line with recent decisions by the Centre. However, where a domain name contains a well-known surname, the gTLD may be taken into consideration as it is the name of a corporate executive (.ceo).
In addition, the registrant stated having planned more projects with the mittal.ceo domain name; however the domain name is inactive. Moreover, as the trademark MITTAL is registered with the TMCH, the registrant would have received notification that he may be infringing a trademark right. Finally, the registrant does not have the surname MITTAL; which may have given him a legitimate interest for registering the domain name. Consequently, no rights or legitimate interests were found in favour of the registrant.
Finally, the Examiner considered that the registration of the domain name by the registrant was done in bad faith since he was fully aware of the existence of an identical trademark. Although the domain name is inactive, the creation of email addresses shows that the domain name is used in such a way as to create potential confusion with the trademark right. Therefore, the use was also in bad faith.
The Examiner thus ordered the suspension of the domain name for the duration of the registration.
This decision seems to be in line with previous URS decisions. In the case at hand, it was clear cybersquatting, hence an immediate response was called for.
With the . ceo gTLD, the names of corporate executives are at high risk of cybersquatting. Companies must consider registering the names of their corporate executives as trademarks, a key condition for bringing extrajudicial action against the registrant of a domain name. At the very least, the registration of domain names with the .ceo gTLD is strongly recommended as a pre-emptive measure.
Dreyfus law firm is an accredited agent by the TMCH and can assist you in better managing your domain name disputes. Please do not hesitate to contact us for any further queries.
Will domain name registrars be liable for counterfeiting websites? This issue is raised before national jurisdictions.
The U.S Court of Appeals for the Ninth Circuit answered negatively to this issue. In this case, the Malaysian company PETRONAS requested the domain name registrar GoDaddy to cancel the domain names <petronastower.net> and <petronastowers.net> directing to pornographic websites. GoDaddy refused to act and Petronas brought an action on ground of cybersquatting against it. However, American legislation considers that a person can be condemned for cybersquatting if the latter registers or uses the domain name in bad faith. The trial court along with the Federal Court of Appeal has rationally dismissed the request of Petronas. They considered that “imposing liability on those who neither use the domain name nor show bad faith would undermine the purpose of the law”.
Nevertheless, the German court is not of that opinion. The Regional Court of Saarbrücken has indeed held the domain name registrar Key-Systems which administered the domain name <h33t.com> as liable. It resolved towards a website proposing free download of the album Blurred Lines by the singer Robin Thicke. Key-Systems argued the absence of its control of the website and thus, absence of its liability. Nonetheless, the court considered that the registrar has the obligation to examine the content of the website once it is notified. Moreover, according to the court, the registrar has the duty to take corrective action in case of obvious infringement of intellectual property rights.
The directive 2000/31/CE on e- commerce has settled these prompt obligations in case of obvious infringement. However, this obligation was never intended to extend on the domain name registrar. Also, the French jurisprudence puts forward that the technical provider does not have to stand in judgement of whether the infringement of obvious character or not (Cour de Cassation, civ. 1ère , 17 février 2011, n° 09-15.857).
The similarity between these two cases is the discussion concerning the liability of the registrar. A European harmonisation of the principle needs to be settled before the expansion of the new Top-Level domains.
Dreyfus & associés is specialised in online conflicts of intellectual property. Do not hesitate to contact us for further information.
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Only a few days apart, two sections of the Paris Court of First Instance respectively cancelled the French trademark “Vente-Privee.com” and acknowledged its notoriety.
