Dreyfus

This final version reflects significant changes.

To reach this result, ICANN based its recommendations on stakeholder input received during the ICANN meeting in Beijing in April, comments provided by various individuals and stakeholder groups in May and June, and also the discussions during the ICANN meeting in Durban in July.

The Agreement between the Registries and ICANN means that the Registry Operator of the new extension has to integrate in the registry-registrar Agreement all ICANN warrants and all mechanism of rights protection independently developed. Thus, the Registry has to consider each requirement – in accordance with the ICANN established requirements – as imperative and immediately applicable.

These final recommendations provide some novelties.

The change provided to the Sunrise period

The Sunrise period designates the priority period for the new strings launch. During this period, a priority record process will be implemented. It allows a brand owner a priority to register domain names reproducing its trademarks. This procedure is mandatory for new Registry Operators.

The Sunrise period also includes the priority process for conflict resolution.

The main difference introduced by ICANN in this publication is the creation of an “End-Date Sunrise”. The Registries will have to choose between:

• A “Start-Date Sunrise”. It allows the Registry to allocate domain names before the end of the Sunrise. If a Registry wants to do this, it must provide advance notice of the starting date for the Sunrise period, at least 30 days prior to opening up to public registration.
• An “End-Date Sunrise”. The Registry can’t allocate any claimed domains until the end of the Sunrise. In this case the Sunrise may start at any time but the Registry must provide advance notice of the end of the Sunrise and that at least 60 days before to opening up to public registration.

Given the planned waiting period to avoid name Collision after a registry agreement is signed, most of the Registries would probably choose an “End-Date Sunrise”.

The changes provided to the Claims Service

Registry Operators must provide the Claims Services for at least the first 90 days of the initial public registration instead of the 60 days as before. The Sunrise Period and the Claims Period must be two distinct phases and must not overlap.

The creation of another Registration Period

Registry Operators will have the possibility of establishing additional periods during which they will accept domain name registrations following the Sunrise Period but prior to opening up to public registrations (a “Limited Registration Period”). The Sunrise Period and a Limited Registration Period can overlap, provided that Registry Operator does not allocate or register any domain names in a Limited Registration Period until all Sunrise Registrations have been allocated and registered.

If a Registry Operator offers a Limited Registration Period, the Registry Operator must provide the Claims Services during the entire Limited Registration Period in addition to the standard 90 days Claims Period.

The possibility to register 100 domain names

ICANN also points out that each Registry Operator would have the possibility to allocate or register for itself up to 100 domain names plus their IDN variants.

ICANN is considering the signature of an addendum to the Trademarks Clearinghouse (TMCH) Requirements which would allow Registry Operators to allocate or register prior or during the Sunrise some or all of the 100 domain names, to third parties.

It remains to be seen if these requirements will be followed…

Our office will broach the following subject: “Domain name jurisprudence news: focus on new gTLDs disputes”.

The virtual world is in constant evolution. This is why it is important to understand the new digital challenges and be aware of the legal risks relating to web 2.0. During this day, participants will share their knowledge on a variety of topics including the arrival of new gTLDs , the latest domain name litigations, e-reputation or familiarization with Cloud Computing.

Some countries have put in place new validation procedures or have accepted for registration names composed of accented characters (or Internationalised Domain Name – IDN).

ARGENTINA: The Argentinean registry Nic.ar has set up a validation procedure for previously registered domain names that will be effective on October 28, 2013. Domain name owners will have to submit authenticated documents proving their identity.

If the registered data is not validated, domain names could be blocked or cancelled. These domain names won’t be able to be renewed, transferred or updated!

COSTA RICA: Nic Costa Rica will update contact information for domain names in .CR between October 7 and November 29, 2013. This update will be carried out by email or phone.

COLOMBIA: From October 15, French accented characters will be accepted for .CO domain name registration. There will be no particular registration period but a “first come, first served” basis will be put in place for domain name allocation.

Besides French IDN, the registry will accept German, Hungarian, Latvian, Lithuanian, Polish, Portuguese and Russian characters. Since the beginning of 2013, Scandinavian characters (Danish, Finnish, Icelandic, Norwegian and Swedish) have been already accepted.

TUNISIA: The Tunisian Internet Agency (ATI) approved two characters’ domain name registration and new IDN: á, â, ã, ä, å, æ, ç, è, é, ê, ë, ì, í, î ï, ñ, ò, ó, ô, õ, ö œ, ù, ú, û, ü, ý, ÿ, ß.

Contrary to Colombia, Tunisia is already organising registration periods:

• from August 1, 2013 until January 31, 2014 for local governmental organisations,
• from October 1, 2013 until January 31, 2014 for applicants holding registered trademark in Tunisia,
• from December 2, 2013 until January 31, 2014 for applicants holding a .TN registration and
• after January 31, 2014 registrations will be opened without any condition.

SEYCHELLES: .SC registry will accept from now on one and two characters’ domain name registration (except country codes from ISO3166 list). The registry wants to identify applicants with the best potential in order to maximise the development of high-quality names and increase the use of .SC domain names. This program won’t be opened to marketing on Internet but aims to find applicants who have a legitimate right to promote the .SC trademark as a strong one.

Within the new gTLD program, ICANN had to assign centres to manage disputes.

Hence it concerns also post delegation dispute such as Registration Restriction Dispute Resolution Procedure (RRDRP) and the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP).

• RRDRP covers dispute resolution between on the one hand institutions and private individuals and on the other hand a community-based new gTLD Registry Operator in order to solve possible deviation problems of the latter about registration restrictions.
• Trademark PDDRP has aimed to handle Registry Operator’s bad manners as regards trademark’s rights violations for top-level and second-level domain names.

After a proposal request on last April 30th, a Memorandum of Understanding (MoU) has been signed by ICANN with new providers for these services. Among them the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the National Arbitration Forum (NAF) for Trademark PDDRP and the NAF will be in charge to manage RRDRP.

The process of rights protection as part of new gTLD release becomes clearer. These new nominations are a very good example of it.

ICANN is starting this month to post Registry Agreement redlined versions to highlight changes between an executed agreement and the current standard.

So far, ICANN has signed 44 new gTLD registry agreements and none of them have important changes from the approved base agreement.

For information, among the 460 applications invited to contracting, 121 applicants have responded to their invitation, 52 contracts have been sent out for signature and therefore 44 applicants have signed Registry Agreements.

The city of Paris opens two subscription periods where first “.paris” will be allocated.

The first period will enable various types of entities to obtain a domain name matching their name or trademark, chosen according to their status (large company, institution, SME, start-up, association).

The second period will consist of candidates selected according to high-value generic domain names such as “visit.paris” or “<street name>.paris”.

Interested entities can subscribe on the website http://mondomaine.paris.fr until December 16th 2013. Their applications will be evaluated according to various criteria such as the nexus of the name to Paris, the services quality or financial criteria.

Our office can advice you and provide you with any additional information you might need.

As a reminder, it has long been established as jurisprudence that acts of counterfeit can be proven by all valid means(1). The process of infringement seizure is facultative. This exceptional recourse offered by the Intellectual Property Code(2) is without dispute the most thorough approach and the evidentiary method that is the most used for questions of counterfeit.

However, this procedure has very strict guidelines concerning both its authorization mechanisms and its terms of execution(3), and because of this its validity is very often challenged by alleged counterfeiters. Infringement seizure must be authorized by Order of the president of the Tribunal de grande instance (High Court) in response to a request presented to him. Judges are particularly keen to ensure that the terms of the Order are respected by the bailiff, and contravening the limits set by Order can lead to either the total or partial nullity of the infringement seizures.

The ruling by the Cour de cassation (Supreme Court) on February 12 2013(4) is an illustration of how keen judges are to ensure that the terms of the Court Order are respected. The Chamber of the Supreme Court sanctioned the patent holder, who had initiated the infringement seizure, with a fine of 100,000€ in damages and interest in favor of the alleged counterfeiter due to procedural abuses during the seizure.

The petitioner, the Vetrotech Saint-Gobain International (Vetrotech) Company, holder of a European patent relating to fire-resistant safety glass, alleged that the Interver Sécurité (Interver) Company manufactured and sold in France types of glass produced from characteristics described in one its patent applications. As a result, the Vetrotech Company requested an infringement seizure at Interver’s premises. Going beyond the terms of the High Court Order, the bailiff asked 24 questions relating to the processes used in the manufacture of the product. Confirming the initial decision, the Paris Appeal Court(5) ordered Vetrotech to pay 100,000€ in damages and interest to Inverter and partially nullified the minutes taken during the seizure.
Before the High Court, Vetrotech argued that indeed the bailiff had exceeded his mandate, but that was insufficient to be classed as an abuse for which their company could be found liable. The Chamber rejected this argument. According to the Court, the very existence of the fault is applicable to Vetrotech since this company had “inappropriately obtained information on the manufacturing procedures of a direct competitor via questions asked by the bailiff.”

The Court underlined in its ruling that infringement seizure is simply an evidentiary measure and the rights of alleged counterfeiters must be respected to the same extent as the rights of the alleged victims of counterfeit. The petitioner cannot take advantage of the seizure in order to inappropriately obtain information about its competitors. Infringement seizure cannot be a means of obtaining access to the premises of its competitors with the aim of discovering their secrets. In order to avoid the proliferation of such operations, their validity is strictly monitored by the Tribunals.

Our practical advice: since a bailiff’s procedural error can be imputed to the petitioner of infringement seizure, collaboration with qualified bailiffs is essential. All due care must be taken.

                                                                                        
(1) Cass.civ, May 30 1927

(2) Article 332-1 and following of the ICC

(3) Law no2007-1544 of October 29 2007, known as anti-counterfeit law

(4) Cour de cassation February 12 2013 Vetrotech Saint-Gobain International AG v. ISG Interver Special Glass

(5) Paris Appeal Court June 22 2011