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 March 25 this year, the Comoro Islands signed the Bangui(1) Agreement, thereby becoming the 17th Member State of AIPO alongside Benin, Burkina Faso, Cameroon, the Central African Republic, the Congo, the Ivory Coast, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Chad and Togo.
Their affiliation took effect on May 25 2013. Since that date, any registration of trademarks, patents, models and plant varieties filed with AIPO is also protected within the Comoro Islands.
Trademarks filed before May 25 2013 with AIPO do not include the Comoros but it is possible to extend protection there via a simple extension request and the payment of a tax.
In the same way, rights holders registered in the Comoro Islands before May 25 2013 can extend their protection to cover all Member States of AIPO by filing an extension request.
As regards trademarks in the process of registration or publication by AIPO, an extension to new Member States is equally possible. The deadline for requesting these extensions is January 25 2015.
Dreyfus is at your disposal to advise you concerning this opportunity to extend your rights to AIPO or to the Comoro Islands.
(1)Concerning the creation of the African Intellectual Property Organization finalized on March 2 1977
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.
Since July 1st 2013 the European Union has been enlarged following Croatia’s signing of the Accession Treaty on December 9th 2011. It now comprises 28 member States.
Croatia is thereby included in every demand for a Community trademark or model.
Since Community trademarks(1) and models(2) were put in place, it is now possible to protect industrial property rights throughout the European Union territory thanks to a single registration procedure.
Community trademarks and models registered or filed before July 1st 2013 will automatically be extended free of charge to Croatia without any further formalities or costs.
Concerning potential problems that may arise between national and European rights holders, the Trade Mark Office has adopted the following temporary measures:
A degree of co-existence with existing rights: holders of Community trademarks or models filed or registered before July 1st 2013 cannot have their rights nullified in Croatia, even if seniority is proven in that country.
A point of mitigation: A Community trademark or model filed or registered between January 1st and June 30th 2013 may be subject to opposition based on earlier Croatian rights(3).
A measure of prohibition: The holder of a Croatian trademark does not have the right to have a Community mark or model nullified, but may only obtain an exploitation ban on their territory.
This mechanism is framed by the notion of good faith. For example, a request for opposition or invalidation filed by the holder of an existing title in Croatia is only possible on condition that the rights claimed were acquired in good faith! In this way the OHMI is attempting to curb the practice of fraudulent registrations, a practice which often occurs in cases of transitory rights.
This system is advantageous for all Community trademark or model holders in the sense that it offers automatic and free protection in the new Member States of the European Union. It would be a shame to miss the opportunity!
Our firm is at your service to guide you on your registration strategies and advise you appropriately.
(1) Regulation of Community Trademarks (CT) no 40/94 adopted on March 15 1994 and EU regulation no 2868/95, providing application procedures for CT regulation.
(2) EU Council regulation no 6/2002 of December 12th 2001 on Community designs and models.
(3) Article 165§3 of the Register of EU Community Trademarks
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
The liberalization of the domain name sphere will be accompanied by major changes regarding the registration of domains.
After acrimonious negotiations between the different protagonists, the “final proposition” for a new accreditation contract between ICANN and registry operators was opened for public consultation from April 22 to May 13. It will be compulsory for new extensions to be administrated by this proposed contractual Agreement. As for existing extensions established under previous RAA versions (2001 and 2009), the application of “RAA 2013” changes in their case is under negotiation.
As a result, to register a domain name, companies will have to modify certain behaviors:
The accuracy of data will be monitored
The domains registered can be suspended or terminated if the e-mail address or telephone number has not been confirmed with the registrar within 15 days. This rule will also apply to registrants of existing domain names who modify previous data;
Contact information must be kept up-to-date
The registrar must be notified of any change in contact information within 7 days. The failure to reply to a request from the registrar for up-to-date information within 15 days can lead to the domain name(s) being suspended or terminated.
Data will be preserved
After the deletion of a domain name or its transfer to a different registrar, the data will be retained for 2 years by the former registrar. However, this provision may need to be adjusted if it infringes national laws relating to the protection of personal data.
Rules will now apply – at last – to proxy or privacy services
Until now, no rules governed these privacy services. From now on, where a proxy registration is concerned, the registrars will be required to forward a copy of the operator’s data to a fiduciary agent. This preserved data may only be accessed in the event of the possible bankruptcy of a registrar or their loss of accreditation. In reality, it is not uncommon in the event of registrar bankruptcy for ICANN to be totally unaware of the operator’s identity, with the same being true for the new registrar in charge of the domain name.
However, the new Agreement could still be modified after the period of public consultation if deemed necessary. The ICANN board will then have to approve the text before registry offices can sign contracts linking them to ICANN. Furthermore, the American Authority wishes to see these new rules in force by January 1st 2014.
For all further information, our firm remains entirely at your disposal.
The WIPO Arbitration and Mediation Center has rejected a legal rights objection filed against registration of the term .tunes as a new generic top-level domain (1).
In this case, the applicant for the TLD “.tunes” was Amazon EU Sarl and the objector was DotTunes Ltd.
Two reasons have conducted the panelist to reject the objection.
On the one hand, the objector’s figurative trademark “.TUNES” is phonetically similar to the gTLD “.tunes” but “the word tunes is, however, a generic and descriptive mark when used in relation to music”.
On the other hand, “the objector has produced very little evidence of use of .TUNES in trade or commerce”. The panelist does not consider that consumers seeing the gTLD “.tunes” would relate it to the objector. In the fourth LRO ruling to date, the WIPO panelist ruled that DotTunes’ European Community trademark wasn’t famous enough to warrant rights protection under the LRO.
DotMusic Ltd, another company of the objector’s group has applied for “.music” and also filed objections against all the other applicants for “.music”. Besides, the panelist has outlined that he “is not making findings in relation to distinctiveness of “.music” which is “the subject of other LRO proceedings”. We will continue to keep you posted !
This revision project is based on a proposition from the 2011 European Commission and will introduce certain changes to current legislation(1). It is presently awaiting a second reading by the European Parliament.
The reappraisal of this legislation has shown the need to introduce improvements to the legal framework in order to reinforce the monitoring by customs officials of intellectual property rights abuses, as well as guaranteeing better legal safeguards.
What are the most significant changes?
The legislation concerns the question of goods in transit or transshipment across European Union territory, and reviews the disputed CJEU(2) ruling on this subject. As a reminder, the current situation limits the possibilities afforded to customs officials regarding non-EU goods in transit or transshipment across the Union which are suspected of being counterfeit. These cannot currently be retained by customs unless proof of commercial exploitation on European Union territory is obtained.
The current project reverses the onus of proof, in that items would be considered as destined for the European market unless otherwise proven by either the owner or transporter of the goods. The goal is obviously to enable customs authorities to act as soon as merchandise enters European Union territory, so that any goods suspected of being counterfeit can be immediately intercepted.
Greater powers would also be granted to customs officers to improve collaboration with destination countries in order to inform them that contraband products are heading their way so facilitating confiscation on arrival.
In a further amendment, the Ruling overturns the solution proposed by the Sopropé(3) judgment
at the European Court of Justice and instigates a plenary “right to be heard”. Before any detention of goods, contact must be made with either the expeditor or the recipient to allow them to explain their intentions and avoid confiscation if appropriate.
However, this new Ruling will not apply to personal goods held by an individual in transit. This loophole will not be closed unless national legislation specifically provides for sanctions.
Concerning the seizure of small packages(4), a specific procedure is envisaged which would allow goods to be destroyed without the consent of the rights’ holder, once he has authorized the application of this procedure.
The merchandise would be destroyed when it is beyond dispute that the products are counterfeit and when the future recipient either accepts the verdict or fails to respond within ten working days.
The present Ruling amendment will certainly provide more efficient protection for rights’ holders, thereby stimulating creativity and innovation whilst offering consumers high-quality, reliable products.
(1) Ruling n°1383/2003 of 27 July 2003 modified by Ruling n°1891/2004 of 21 October 2004.
(2) Joint cases: European Community Court of Justice, 1st December 2011 Philips (C-446/09) and Nokia (C-495-09)
(3) Court of Justice of the European Union, 19 December 2008, case C-349/07 Sopropé Organizações de Calçado Ldac/Fazenda Publica.
(4) A small package is defined by the Commission as being a postal item containing three units or less, and weighing less than two kilograms.
First LRO decisions have just been published on the WIPO website (1).
As you know, the WIPO is the exclusive provider of the LRO which is a way for trademark owners to file a complaint against a new gTLD’s application which appears to constitute in particular an infringement to its trademark. The objections were relating to the following new top-level domain (TLD).
The objections were relating to the following new TLD:
SC Johnson’s .rightathome
Vipspace Enterprises’ .vip
Google’s .home
Objectors to .home, .vip, and .rightathome all lost their cases.
SC Johnson’s .rightathome:
The applicant is a subsidiary of the well-known cosmetics company SC Johnson, which uses “Right@Home” as a brand since 2008. SC Johnson is a manufacturer of various household products. The objector is Right At Home, an international provider of in-home elderly care services which uses “RIGHT AT HOME” as a brand since 1995.
Complainant argued that the applicant’s use of its proposed .rightathome TLD would cause confusion among consumers.
In this case, the panelist has discussed each of the 8 points described in ICANN’s new gTLD Applicant Guidebook, and had to decide whether the evidence favors the objector or the applicant. Panel concludes that the applicant won on five out of the eight criteria.
The panelist rejected the objection on three main elements.
Firstly, the parties target their services to separate types of customers. There is no likelihood of confusion in different markets because it’s unlikely internet users will think the gTLD belongs to Right At Home. Secondly, the term “Right At Home” is also used by other companies in addition to the Complainant and Respondent. Finally, the applicant did not apply for .rightathome in bad faith.
Vipspace Enterprises’ .vip:
The objection was filed by one .vip applicant against another.
The respondent is Vipspace and the objector is I-Registry. The latter’s parent company, I-content Ltd, is the registered proprietor of the VIP word mark. The parent company granted the objector an exclusive license to use the mark. Vipspace Enterprises is the registered proprietor of the DOTVIP Community Trade Mark.
The panelist’s decision focuses on the generic nature of the string in question. Both trademarks were filed for the word “VIP” meaning “Very Important Person” for services activities providing to “important persons”. These trademarks are thus descriptive trademarks.
The panel found that the intended use of the gTLD will lead to it being seen “first and foremost as a descriptive term describing the purpose and characteristics of the domain”, adding that confusion with the objector’s mark was not likely.
Google’s .home:
The objector, Defender Security Company, is a home security company and has also applied for .home and objected to nine of its competitors for the string. The applicant was Charleston Road Registry which is Google’s domain registry.
The panelist considered each of the home-related marks identified in the complaint and concluded that the objector failed for lack of evidence that complainant held valid rights to the said marks.
Indeed the Community trademark cited in the complaint did not belong to the objector but to one of its subsidiary and the Complainant was not able to demonstrate a subsidiary link between the companies. For the US trademarks cited in the complaint, which are not registered, objector “fails to attach any evidence of the factor that would tend to established secondary meaning in support of rights”. Indeed Panel noticed that in cases involving claimed common law or unregistered trademarks, the said mark may have a secondary meaning or distinctiveness. Objector failed for lack of evidence that he is the rightholder of the said marks.
Moreover, the panelist considers that: “The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced”.
More than 60 LRO are actually pending before the WIPO Arbitration and Mediation Center, and additional decisions are expected soon.
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Since June 11, 2013, the Luxemburg domain name registry (DNS-LU) allows claimants to request to “freeze” a given domain name.
