Dreyfus

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

On June 10 2013, the Council of State nullified the former judicial structure for domain names in .fr.

Four documents foundational to the policy of French domain name attribution have been annulled: legislation for alternative procedure in litigation resolution, known as “PREDEC” ruling; naming regulations for .fr from 2009-2011, as well as both the 2009 Order and Convention designating the Registration Office for .fr.

This important decision follows one made by the Constitutional Council (1) repealing article L45 of the Code of electronic posts and communications, judged to be in breach of Constitution. The aforementioned article has no longer been in force since July 1st 2011, but since the European Commission had never been notified, the Council of State decided to nullify.

The current judicial framework is not affected by this decision, but the AFNIC (2) “is soon to examine the medium-term consequences” and “intends to continue on a daily basis to fulfill its mandate at the service of French internet users, title holders and registration offices for .fr, in accordance with its mission and, henceforward, the demands of ongoing service to the public.”

The AFNIC, which is the register for domain names in .fr (France), .re (the Reunion Islands), .yt (Mayotte), .wf (Wallis and Futuna), .tf (Southern and Antarctic territories), and .pm (Saint-Pierre et Miquelon) is currently subject to a new domain name charter which took effect on March 15 2013.

(1) http://www.conseil-constitutionnel.fr/conseil-constitutionnel/francais/les-decisions/acces-par-date/decisions-depuis-1959/2010/2010-45-qpc/decision-n-2010-45-qpc-du-06-octobre-2010.49663.html
(2) French Association for cooperation with Internet domain names

Since June 11, 2013, the Luxemburg domain name registry (DNS-LU) allows claimants to request to “freeze” a given domain name.

The “Dispute entry” is a procedure by which the disputed domain name cannot be traded to someone else for an initial period of 1 year. The freezing period can be extended for an additional period of 6 months, provided the claimant submits a formal request for this purpose. This freezing period must allow to resolve the dispute between the claimant and the domain name holder.

How to obtain a domain name freezing order?

• Claimant must provide sufficient evidence that he has rights on the said domain name and/or that its rights have been infringed. The request must be accompanied by documentation proving the claimant’s rights.
• Claimant must have initiated formal measures against the present domain name holder. More specifically a Dispute request form has to be submitted to DNS-LU.

If the dispute is solved, the claimant must submit a formal trade request to the registrar of his choice. The trade request will be checked and validated by DNS-LU subject to the reception of documents proving the resolution of the dispute in favor of the claimant.

In case of a domain name cancelation during the dispute period and no dispute resolution having taken place, the domain becomes available again for any interested party, without the claimant having a preferential registration right on the domain name.

The introduction of this procedure breaks with the registry’s traditional position. Indeed, DNS-LU is not a legal authority to be involved in disputes or claims associated with domain names and is not involved in such disputes in any way, either in favor of the claimant or in favor of the domain holder. Since the introduction of this procedure, DNS-LU, as registry may, however, assist any claimant who feels that his rights have been infringed by a domain by filing a formal Dispute entry.

In case of conflict with a .lu domain name you may contact us and we will guide you through the procedure!

On May 13 2013 Pierre Lescure submitted his report to the French Minister for Culture and Communication entitled “Act II of the cultural exception” regarding “digital content and cultural policy in the digital era.”

The report contains 80 proposals for adapting the cultural economy to the digital era. In particular it recommends the removal of the HADOPI (French Authority for the diffusion of creative work and the protection of owners’ rights on the Internet), conferring its repressive missions to the Conseil Supérieur de l’Audiovisuel (CSA), and recommends maintaining the Graduated Response whilst modifying the types of sanctions imposed.

The regime introduced by the HADOPI law (1)

To recap, the HADOPI legislation introduced a mechanism for a graduated response to combat illegal exchanges of creative works protected by copyright or associated law.

The graduated response mechanism involves sending a warning message to any internet site owners who fails in their duty to monitor appropriate internet access. In the case of a repeat offense, the second stage consists of sending a warning by e-mail, in addition to a letter sent by recorded delivery. In the event of further breaches, sites owners are notified that they risk legal action. In such cases, the maximum sanction applicable is a fine of €1,500 for an individual. The judge can also impose an additional penalty by banning access to the Internet for a maximum period of one month.

The regime advocated by the Lescure Report

The Lescure Report recommends transferring responsibility from HADOPI to CSA whilst maintaining the Graduated Response mechanism.
As regards sanctions, the Report recommends abandoning the measures for temporary Internet suspension and also proposes replacing the fine imposed by an ordinary court by a relatively small administrative fine of €60.

Opposition to the Lescure Report

The Report has met with a variety of objections. On the one hand, the project is highly likely to meet with parliamentary opposition since certain Socialist mp’s, especially Patrick Bloche, vehemently oppose it.

On the other hand, proposals included in the Report are in danger of being blocked by the Constitutional Council. Previously, the possibility of an administrative fine had already been raised during debates on the HADOPI law in 2009, but abandoned in favor of a court fine. The Constitutional Council had opined that the Graduated Response system could only be applied by the judiciary, which led to the system currently in place. In particular, the Council was of the opinion that there could be no removal of Internet access without a judge’s decision. Since the Lescure Report advocates abandoning the measures for temporary Internet suspension, it would no longer be necessary to go before a judge and the graduated response could be ratified by an administrative fine. However, there is no guarantee that the Council will rule that conferring sanctions to an administrative authority is constitutional.

In addition, the CSA has openly stated that they do not wish to impose fines themselves, preferring to leave that to the judges. Olivier Schrameck, president of the CSA, made the following statement to the Association of Journalists (AJM): “I will not turn up wearing a kepi. And I am not asking for the right to apply sanctions. Absolutely not.”

To be followed…

                                                                              
(1) Law no 2009-669 of June 12 2009 promoting the distribution and the protection of original works on Internet.

Restricted only to companies until now, Employ Media intend to liberalize the “.jobs” in a very near future.

For the first time, an actual live TLD will have its conditions for registration changed from a restricted status to a public one. This evolution is very important as any natural or legal person will be allowed to register a domain name in “.jobs”.

Before the opening of this “General Availability” period, Employ Media plans to offer, as for the new gTLDs, a “Sunrise period” in order to allow trademarks owners who have registered their trademarks in the Trade Mark Clearinghouse Database (TMCH) to register corresponding domains.

ICANN has welcomed this initiative with great enthusiasm. Indeed, this unprecedented approach will be a real challenge for the TMCH which will be able to trial the efficiency of its process set up for New gTLDs.

There is still no date scheduled for the launch of the Sunrise Period. Employ Media has not specified if the trademarks owners who have not registered their trademarks in the TMCH will be allowed to benefit from this Sunrise Period either. Nonetheless, the TMCH is already the center of all attention.

The last ICANN (1) meeting took place during the week of July 13. 59 GAC Members and 4 Observers met in Durban, South Africa to take stock of the new gTLDs, discuss the evolution of the whois and the relations between ICANN and governments.

The GAC, which is the Governmental Advisory Committee of the ICANN, has just published its Communiqué (2) to make recommendations to the ICANN Board on some specific disputed applications:

• The GAC officially objects to .amazon (also in Chinese and Japanese) and to .thai because of the potentials conflicts due to their geographical meaning.
• The GAC advises the ICANN Board not to proceed beyond initial evaluation until the agreements between the relevant parties are reached for the applications for .spa, .yun, .guangzhou and .shenzhen.
• The GAC allows the two strings .vin and .wine and, due to the complexity of the matter, to take 30 additional days to conclude on the matter.
• The GAC does not object to the .date and to the .persiangolf while some though that those strings would be problematic.

Then, the GAC reaffirms its previous advice from the Toronto and Beijing meetings that Inter-Governmental Organizations acronyms warrant special protection by ICANN. The same applies for Red Cross and Red Crescent Committees and Federations acronyms’ protection. A discussion between members of the GAC and NGPC (New gTLD Program Committee) and Inter-Governmental Organizations representatives is under way to find an adequate protection to these acronyms.

Finally, the GAC reiterates its advice to promote Community applications.

The next meeting of the GAC will happen during the 48th ICANN meeting in Buenos Aires, Argentina.

                                                     
(1) Internet Corporation for Assigned Names and Numbers
(2) http://durban47.icann.org/meetings/durban2013/presentation-gac-communique-18jul13-en.pdf