Dreyfus

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.

                                                                          
(1) http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0030.pdf
http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0014.pdf
http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0032.pdf
(2) http://archive.icann.org/fr/topics/new-gtlds/rfp-clean-19sep11-fr.pdf section 3.5.2

As is common knowledge, each European country is currently developing its own structure for the sale of medicinal products on the Internet.

This was made possible for member countries of the European Union by a European directive in 2011 (1). This stated that member countries must allow on-line sales of medicinal products to the public, whilst allowing them to prohibit mail-order selling of medication sold on prescription, either for reasons of public health or safety.

In France, the directive became an Order on 19 December 2012 (2) which authorized the on-line sales of medicinal products.

The primary goal is to combat fraud and counterfeit medication. Across the world more than 18,000 illegal sites for on-line sales of medicinal products have been identified and shut down. 3.75 million potentially lethal medications have been seized. In France, seizures by customs have increased by 290%. This figure is a very significant increase compared to the previous statistics released in 2011 (3). In addition, according to the World Health Organization (WHO), approximately 50% of medicinal products sold on the Internet are counterfeit. The regulation of pharmaceutical on-line sales had therefore become essential in order to ensure consumer safety.

Which medicinal products can be sold?

Initially, the Order limited the sale of on-line medicinal products to the category of medication known as “medicinal medication”, in other words medicinal products sold over the counter in pharmacies. Then, in a further development, restricting on-line sales to only one category of pharmaceutical products that required no prescription was suspended by a decision of the State Council (4). This thereby widened the on-line market to include all medicinal products that could be purchased without a mandatory medical prescription. As a result, over 3,500 referenced products can now currently be sold on-line.

France: who can sell medicinal products on the Internet?

Since the sale of medicinal products on-line must comply with public health and safety requirements, this market is not open to every sales channel on the web. Only pharmacies registered in France as licensed medicinal pharmacies can sell medicinal products on-line. The same goes for the managers of mutual pharmacies or rescue services who may sell exclusively to their members.  It is mandatory for the internet site to be part of a medicinal pharmacy. Any termination of the pharmacy’s medicinal activity would automatically lead to the closure of its internet site. Pharmacists are responsible for the content of the internet site that they edit and the context in which the electronic sales of medicinal products are made.

In France the ‘Conseil national de l’Ordre des pharmaciens’ (National Council of the Order of Pharmacists) maintains a list of authorized on-line pharmacies. There are currently 32 on this list as of June 24, 2013.

Under what conditions can an on-line pharmacy be opened?

Firstly, pharmacists must be authorized by the Local Health Authority to which they are affiliated. Then they must inform their local Order of Pharmacists of the launch of their internet site within the15 days following authorization. Finally, French sites that are authorized to sell on-line medicinal products must display the following compulsory elements:

• contact details for the ‘ANSM’, the French national agency for the safety of medicinal and health products.
• links to the websites of the Order of Pharmacists and the French Ministry of Health.
• the European logo to be used by all member States of the European Union which relates to the electronic sales of medicinal products that is currently being established by the European Commission.

How is the situation being monitored and controlled?

Currently, the fight against illicit sales of medicinal products on the Internet is the result of international cooperation involving powerful agencies such as the International Institute of Research against Counterfeit Medicines (IRACM), Interpol and the World Customs Organization.

The Directive stipulates (5) that monitoring and control should be ensured by member States who must take all “necessary measures” so that counterfeiters incur “penalties that are stringent, proportionate and dissuasive.”

At a national level, the major player is ‘ANSM’, the French national agency for the safety of medicinal and health products which is involved in every stage from the production to the marketing of medicines. However, the ANSM’s main role is to monitor its territory. Up to now there has been no specific French organization established for the monitoring of the medicinal market on the Internet. The fight against fraud and counterfeit medication on the Internet is the result of collaboration between the OCLAESP (a centralized office that combats environmental hazards and risks to public health), the ANSM, and the services of the police, national gendarmerie and customs.

It is now essential that monitoring organizations should be established at a national level who would be fully specialized in internet surveillance. The ANSM needs assistance in its struggle against the sale of counterfeit medicines on Internet on French soil.

The Health Minister is shortly due to publish a decree defining best practice for sales distribution by electronic means. However, on May 15 2013 the French Competition Authority expressed its concerns about this ministerial order defining best practice (6), considering that the restrictions that it contains “are not warranted by public health considerations” and that they would limit the development of the on-line sales of medicinal products in France. In particular, according to the Authority, pharmacists should be able to propose medicines and parapharmaceutical products on the same internet site. The Authority equally takes issue with the compulsory alignment of sales prices on the Internet with products sold over the counter.

What sanctions can be imposed?

Pharmacists who fail to comply with regulations could face the temporary closure of their site plus the possibility of a fine. In addition, the distribution, marketing, offer of sale, act of sale or the importing of counterfeit medicinal products is punishable with 5 years imprisonment and a 375,000€ fine (7).

Both vigilance and swift action are required in order to identify internet sites selling illicit medicines. With the development of the legal sale of medicinal products on the Internet, there is even greater risk that consumers may be misled. Moreover, a survey indicated that 80% of French people were fearful that medication purchased on the Internet would be counterfeit (8), which clearly reflects the lack of consumer confidence as regards this new distribution channel.

This confidence will only be restored if there are adequate sanctions and appropriate surveillance. If a Google search is made for “on-line pharmacy” or “medicinal products on the Internet”, it becomes clear that illegal on-line pharmacies are still operational.

In theory, any advertizing for pharmaceutical dispensaries is illegal (9). In reality it is clear that on-line pharmacies do not hesitate to use tools for on-line advertizing or referencing such as Google Adwords.

As a start point, the use of a surveillance system for Google Adwords would appear to be essential in order to improve the monitoring and control of this market.

                                                                                   
(1)   Directive 2001/62/UE of the European Parliament and Council of June 8, 2011 having modified the prevention of the introduction of counterfeit medicinal products in the authorized supply chain, Directive 2001/83/CE of November 6 2001 that instituted a Community Code concerning medicinal products for human consumption.
(2)   Order 2012-1427 of December 19 2012 confirmed by Decree 2012-15 of December 31 2012 and codified via articles L5125-33 and following, and R5125-70 and following of the Public Health Code.
(3)   Source: internet site of the ‘Ordre des pharmaciens’.
(4)   Referred Order of the State Council, February 14 2013 no 365459.
(5)   Article 85, sixth quarter.
(6)   Opinion no. 13-A-12 of 10 April 2013 on a draft resolution regarding good practice in the dispensation of medicinal products by electronic means published on May 15, 2013.
(7)   Dispositions made by Order on December 19 2012 enforced by articles L5125-39 and L5421-13 of the Public Health Code.
(8)   Survey by the ‘Pasteur Mutualité/Viavoice’ group on “the French and the sale of on-line medicinal products”. Sample of 1007 people, representative of the French population aged 18 and over, surveyed on February 28 and March 1 2013 by telephone.
(9)   Articles L5125-31 and R5125-29 of the Public Health Code.

Of the 1930 applications announced by ICANN in June 2012, approximately 500 are due to reach the delegation phase which equates to integration in home territories. This estimation is an indication of the number of safeguards established by ICANN to filter applications.

In addition to ICANN’s examination structure and the objection procedures, candidates also have to face the scrutiny of the GAC1, the organization defending government interests at ICANN. By November 20 2012, 56 governments had issued 242 early warnings against 218 candidates, targeting amongst others the .sucks, .wtf and .vin. These warnings did not necessarily sound the death knell for the applicants targeted: candidates had the possibility of following advice from the GAC in order to modify their application.

Besides, more formal recommendations have also been made by the GAC – GAC Advices – concerning problematic extensions. This is particularly the case where an extension broaches a sensitive area or contravenes existing legislation.

The full list of GAC Advices was communicated on 11 April last year. Targeting over 500 applications, several categories of recommendations can be highlighted:

• First of all, the GAC expressed formal opposition to the extensions .africa and .gcc (Gulf Cooperation Council)

• Without reaching consensus, certain members of the GAC considered that extensions featuring religious terms (.halal, .islam) are targeting a sensitive issue.

• For a series of extensions, the GAC recommends additional examination criteria before the application process may continue. Amongst others this would include the .date, .vin, .persiangulf or .thai.

• ICANN had not considered that the question of singular/plural could cause confusion. The GAC recommends that ICANN change its stance on this point: such co-existence could lead to a risk of confusion amongst consumers. Such cases should be referred to the contention sets for a ruling to be made.

• According to the GAC, three areas require particular attention: extensions classed as sensitive, consumer protection and regulated sectors. In this way certain families of extensions are under scrutiny, such as: intellectual property (.video, .app, .online, .zip, .movie, .radio), company identifiers (.corp, .inc., .sarl, .limited) or child protection (.kinder, .kids, .toys, .school, .games). To proceed, security measures must be imposed, in particular: the operator of the extension must include in the registration contract a clause confirming that the user will abide by the laws pertaining to the collection of personal data, consumer protection or financial information.

• For certain categories, the GAC goes even further and requires the inclusion of other additional measures. This particularly applies to family extensions involving gambling (.bet, .casino, .poker), the environment (.eco, .organic, .earth) or health (.fitness, .doctor, .medical, .dental) for which the operator of such extensions will have to check official documents such as licenses or authorizations verifying that the operator has legitimate access to such extensions. Post agreement checks should even be made periodically to guarantee maximum security for Internet users.

• Finally, the GAC shared its view on extensions whose registration will be limited or closed. For these groups of extensions, it seemed desirable to filter access to them, provided that the administration of the extension by the operator is carried out in an open and fair manner.

On the other hand, generic extensions (.theatre, .salon, .game, .baby, .beauty, .blog) closed to the general public must be administrated, according to the GAC, in the public interest.

On April 18 last year, ICANN gave formal notification to candidates concerned by a recommendation in the publication of the aforementioned GAC Advices. They then had 21 days in which to present their response to the American authority. In parallel to this, an invitation for public comments was opened by ICANN (from April 23 to May 14 2013). ICANN will take into account both candidates’ replies and public comments in its handling of the GAC Advices, without, however, being bound by their views.

Of the 500 extensions that should be integrated into home territories from this summer, over half (approximately 300) should be .marks with a closed and protected registration, the remainder being generic terms. A new landscape of domain names is looming on the horizon.

To be continued…

Opposition systems offer third parties the opportunity to oppose the registration of a trademark within a certain period of time provided by the applicable law.

An opposition must allege at least one of the grounds for opposition – either absolute or relative – among those that are recognized under the applicable law.  Opposition procedures are closely related to the registration procedure.  They may be part of the initial registration procedure (pre-registration opposition) or directly follow the completion of the registration process (post-registration opposition).

Source: WIPO

The Appellation of Origin is the term used to describe products which are produced, processed and prepared in a given geographical area with recognized expertise.

The Controlled Appellation of Origin (AOC) is a French term and describes products for which all steps of the production process are carried out in accordance with recognized expertise in a specific geographical area that gives the product its essential characteristics.

The Protected Appellation of Origin (AOP) is the European equivalent of AOC and protects product names throughout the European Union.

Source : alimentation.gouv.fr, Commission européenne

Arbitration is an Alternative Dispute Resolution process. It is the procedure by which parties in litigation decide by mutual agreement to submit their disputes (present or future) to one or more impartial and independent experts chosen for their qualifications and expertise in their sector.

The parties are bound by the decision made by the arbitrator or arbitration body.

ICANN has just revealed that the first new gTLD might be opened for registration in the very near future.

Registered to the root of the Internet as soon as the beginning of this summer, new gTLDs implementation should be followed by a Sunrise notice period from August 29th to September 27th this year, for trademarks owners.

ICANN created the Trademark Clearing House (TMCH) so as to allow owners to exercise a better control over the registration of domain names incorporating trademarks. Indeed, once trademarks are registered in the TMCH database, owners benefit from the priority registration period – the Sunrise Period – and are notified when a third party registers identical or similar domain names.

As from now, Dreyfus, TMCH accredited agent, advices owners to register their trademarks in the TMCH Database so as to benefit from this great advantage before the Landrush and the General Availability periods.