Dreyfus

Nominet is the registry responsible for the <.co.uk> domains and operates also a dispute resolution service. On a general level, as the allocation of the domain names has always been offered under the “first come, first served” approach, it can raise conflicts. When someone estimates that a domain name registration has been made in violation of his rights (like a trademark), he can envisage two different paths. Either he can go to court, following the normal process of a lawsuit, or he can file a complaint with Nominet, which provides its own extrajudicial procedure for domain name disputes.

This extra-judicial dispute procedure is set out in a document called “Dispute Resolution Service Policy” (DRS). After the filling of the complaint, parties have to pass through a mediation phase, which, in some cases, ends up, on a settlement. If the mediation fails, an Expert rules on whether there has been abusive registration of the domain name.

The decision of the Expert can be appealed with Nominet, which then appoint an appeal panel of three members from a group called the “Expert Review Group”. The Experts will only state on the abusive nature of the registration as for the first hearing of the case.

Airline operator Emirates has used the Nominet process described before to challenge the registration of the domain name <emirates.co.uk> on the basis of his trademark’s right.

The first Expert decided domain name’s registration was legitimate and Complainant appealed the case directly before Nominet. The panel of Experts reversed the decision and ordered the transfer of the domain name in dispute.

An appeal was then lodge before the High Court of Appeal.

The Judge explained that the DRS policy do not authorize the addition of parallel court proceedings on the point.

Indeed, if that were to happen, then any DRS procedures that were subsequently started would be immediately suspended under paragraph 20 of the procedure[1]. Therefore, “Complainant would be deprived, for the time being, of the proceedings which the DRS held him out”.

Furthermore, the High Court’s judge added that the Nominet procedure was “much more consistent with the conclusion that the question (of abusive registration) is one for the Expert alone”. The abusive registration of a domain name can only be held before Nominet.

The claim was therefore stroked out.

The accuracy of this decision has to be noted. The High Court of Justice made a strict interpretation of the DRS policy in order to protect the Nominet dispute procedure and explained precisely how the addition of a parallel route would have threaten the extrajudicial procedure.

Therefore, there could be no re-hearing of a second degree extrajudicial decision of Nominet. Furthermore, in the light of High Court decision, we might think that there should be no re-hearing of a first degree decision too. Indeed, Judge said the question of abusive registration was for the expert alone and consequently not for a Judge, even regarding a non-appealed decision.

Furthermore, it seems that UK Judges are not bound by a Nominet decision. Indeed, the deny of a “parallel route” highlight the independence between the two procedures. Consequently, it would be illogical to bind a Judge by an Expert decision. Moreover, the possibility of a new judgement, independent from an extrajudicial decision has already been set out for the UDRP by the United States District court in May 10, 2001[2].

The independence of the two procedures keeps them safe one from another. Indeed, the Expert and the Judge do not rule the same way since the Expert could only decide on the abusive registration of the domain name. If a re-hearing of a Nominet decision had been authorized before the Judge, this later would have decided in the light of the abusive registration too. Consequently, this could have created an interference with other law like trademarks. For example, a trademark infringement is independent from any king of abusive behaviour from the infringer. Authorizing a re-hearing would have introduced a new unforeseen kind of exception.

The current French alternative procedure for domain names is called Syreli and is managed by the AFNIC. This dispute resolution system was set up following the decision of the French Supreme Court of October 6, 2010 and has been available since November 21, 2011.

The particularity concerning Syreli is that the AFNIC is also the registry for the <.fr>.

Therefore, the AFNIC can rule against the registration or the renewal of any domain name in <.fr> and is also in charge of the dispute resolution system.

That is a unique role as both a decision-maker and a judge for the AFNIC. This accumulation of advantages seems to be opposed to the right to a fair trial provided by Article 6§1 of the European Convention on Human Rights (ECHR).

The ECHR requires an “impartial tribunal” and the Court has its own tribunal definition which is very broad[1]. Consequently, there should be no reason for the Court not to qualify the AFNIC as a tribunal.

The Court divided the impartial requirement into two components, objective and subjective impartiality and in the Syreli procedure, the objective impartiality deserves some attention.

The Court defines objective impartiality as “whether the judge offered guarantees sufficient to exclude any legitimate doubt in this respect”[2].

The Syreli procedure states that the court is to be composed of three members: the CEO of the AFNIC and two named members of the AFNIC.

Therefore, there is no interdiction for AFNIC, which has already ruled on the registration or the renewal of a domain name, to take part in a dispute resolution procedure about the same domain name!

Consequently, the composition of this Court seems to infringe on the impartiality requirement of Article 6§1 of the EHCR.

Thankfully, in a convention between the French government and the AFNIC[3], the latter agreed to set up in September 2013 a new dispute resolution procedure placed under the WIPO authority.

[3] http://www.afnic.fr/medias/documents/convention-etat-afnic-fr.pdf

Two new States have just joined the Madrid Union, which increase to 87 the total number of contracting parts to the Madrid system.

The accession of Colombia to the Madrid Protocol took place on 29^th May 2012 and enters into effect on 29^th August 2012. This way, right holders will be able to protect their marks on the territory through an international mark designating Colombia. A posterior designation is also feasible, even if the international mark is anterior to the accession of Colombia. The deadline to notify a provisional protection refusal is extended to 18 months and the notification of a provisional refusal based on an objection could intervene after the expiration of the 18-month deadline.

The Philippines have filed their instrument of accession to the Protocol to WIPO on 25^th April 2013, making this effective on 25^th July 2012. Contrary to Colombia, an international trademark registered before the accession of the Philippines to the Protocol will not be subject to an extension with respect to them. This way, only the international trademarks registered after the 25^th July 2012 may designate the Philippines. Like Colombia, the deadline to notify a provisional refusal of protection is from now of 18 months.

The accession of Colombia could mark a major turning point in the History of the international trademark. Indeed, Colombia is the first country of Latin America to take part to the Madrid system. It is likely that other countries from South America follow this trend, like Mexico, whose Senate has recently adopt a law authorizing a future accession to Madrid Union. Discussions are ongoing in the Intellectual Property Office of New Zealand (IPONZ) for a possible accession.

From the creation of the Madrid Protocol in 1989, the number of contracting parts to the Madrid system is rising steadily, facilitating the international trademark protection of right holders. These recent accessions show again the interest for the Madrid system and the vitality of the international trademark.

It would be a pity not to benefit from it!

Concomitantly to the launch of the .eu on the 7^th of December 2005, license contracts blossomed here and there with non-European companies in order to register .eu domain names during the so-called “Sunrise Period”, especially between US companies and European law firms. The juridical set-up is as follows: a USA company willing to reach the European market through a .eu but which did not have any link with the European Community such as headquarters or a principal place of business, had license contracts signed with a trademark attorney located within the Community. The license enabled the trademark attorney to register a .eu domain name on his own name but on the behalf of the trademark holder which did not fulfill the requirements set-up by the article 4, §2b Regulation (EC) n°733/2002 of the European Parliament and of the Council of 22 April 2002[1]. These juridical set-ups emerged during the Sunrise period[2] before the .eu was made available for registration to the general public.

The underlying nature of these contracts appeared doubtful to a Belgian contact lenses company, which decided to raise a preliminary ruling before the CJEU. Through these schemes companies seem to circumvent the requirements laid down by the Regulation.

The Pie Optiek Case

The Belgian company Pie Optiek runs a business of contact lenses and glasses that are sold through an online service. Its core business is done through the website www.lensworld.be. The latter was willing to register a .eu domain name during the Sunrise Period, which started to run from the 7^th of December 2005 for a four months period. The said company applied for a Benelux trademark on the sign “Lensworld” before applying for the domain name lensworld.eu. EURid denied the registration of the domain name because Bureau Gevers had already registered it. With the prior registration made by Bureau Gevers the question of the essence of trademark license comes via the backdoor. Another US company, namely Walsh Optical, signed a license agreement with Bureau Gevers. As the US company did not have its headquarters in Belgium, it uses the juridical set-up described above. As a result, Bureau Gevers registered the domain name lensworld.eu before the Belgian company. The question was whether Bureau Gevers can be deemed as a “holder of prior rights” in the light of the EC regulation n°874/2004? Pie Optiek sought relief before the Belgium Courts, its claim was twofold:

– Pie Optiek wanted to obtain acknowledgement that the registration was speculative and abusive and;

– to obtain the transfer of the disputed domain name lensworld.eu.

The advocate general, Mrs Trstenjak in her conclusions released on the 3^rd of May, dwells on the necessity to have an establishment within the Community in order to qualify as a registrant for a .eu.

The preliminary ruling which was raised before the CJEU was whether the aforementioned juridical set-up can be deemed as a genuine license contract. Needless to say, the decision of the CJEU was awaited by companies who had entered into these legal arrangements. The arrangement proved to be a genuine threat to non-European companies as the CJEU followed the conclusion of the Advocate General in its decision on July 19, 2012. The CJEU insisted on the utmost importance of having a tie with the EU to qualify as a “holder of prior rights”. The artificial nature of the juridical set-up contravenes the spirit of the Regulation. To quote the CJEU:

” it would be contrary to the objectives of Regulations No 733/2002 and No 874/2004 for a holder of prior right to whom that right is available in its entirety but who does not satisfy the test of presence in the European Union to be allowed to obtain for his own benefit a .eu domain name through a person who satisfies that presence test but to whom that right is not-even partly or temporarily- available”.

This decision could have a domino effect on .eu registrations that were done through this juridical set-up. It highlights that the establishment of a company within the EU is of utmost importance in EU law.

For a few years until now, the registration of china’s .cn top level domain (TLD) has been accessible with limited access to foreign individuals and companies. The aim was to fight cybersquatting.

However, the Chinese government has decided to reopen .cn registrations to foreign companies and individuals. The China Internet Network Information Centre (CNNIC) has set requirements which came into effect on Monday, September 3, 2012 that foreign companies and individuals have to follow in order to register .cn domain names.

Foreign companies are now able to register .cn domain names in their own name as long as they respect the requirements issued by CNNIC. Registrants have to provide a copy of their business license and the contact ID of the person responsible in the company. A signed letter of Commitment is no longer required.

When it comes to individuals, there is one simple condition: providing a copy of an official document containing the name such as a passport, ID card.

It seems that fighting cybersquatting is not the primary goal of the Chinese authorities anymore !

We can expect an increase of cybersquatting in the .cn

Within the new gTLDs framework, Icann had set a 60 days period for public comments on issued applications, that is to say until August 12. Facing the large number of applications (1927), the numerous comments already issued (more than 5000) and the insisting request for an extension of the public comments period, Icann announced a 45 days extension (that is to say, until September 26, 2012).

Public comments are of high importance insofar as they are then forwarded to the evaluation panels to review and consider as part of application’s evaluation. Comments can be done regarding one of the following criteria:

–          String Confusion Objection

–          Legal Rights Objection

–          Limited Public Interest Objection (morality or public order)

–          Community Objection

These comments will not be considered as formal objections and will not by themselves block an application from being evaluated.

Public comments: a dual interest

If the first effect of a public comment is to make publicly known the opinion of a company or of an organization concerning specific applications, and thus to attempt to influence the evaluation panel decision, there is a second effect that appears through the Independent Objector.

The latter, appointed by Icann, is responsible for filing – at his sole discretion – formal objections to applications that would undermine public order or community interests. His role is on the other side limited to the applications that have been the subject of a public comment.

With more than 1900 applications for TLDs covering many fields, the Internet business and SEO ranking of companies will be impacted in the coming years.

Posting a public comment before September 26 is thus the best option in order to make known one’s objection to certain applications.

On the 23^rd of March 2012, the General Court upheld the rejection of the application of the community trademark ‘BEATLE’. Even though this trademark was aiming at protecting electric mobility aids for disabled persons, the OHIM rejected the application of the company Handicare Holding BV (now You-Q BV) on the 31^st of May 2010. Actually, Apple Corps, the record company of the famous band from Liverpool, opposed the application relying on its several earlier trademarks ‘THE BEATLES’ and ‘BEATLES’, including community, national, figurative and word trademarks.

The European jurisdiction first notes that the trademarks ‘THE BEATLES’ and ‘BEATLES’ have a very substantial reputation, particularly regarding the sound records and video records fields. If the decision then puts forward that the signs are visually, phonetically and conceptually similar, it acknowledges that the goods targeted are different.

Even without any risk of confusion, a link between the two signs is not inconceivable. The decision states that the trademarks ‘THE BEATLES’ and ‘BEATLES’ have such a reputation that a similar trademark would take unfair advantage of the positive images of freedom and youth which the relevant public may associate to other goods. The Court here applies Article 8(5) of the Regulation on the Community trademark concerning the protection of a trademark that has a reputation when goods are different. The ruling is moreover in the wake of the Community case law[1] which requires: “first, that the earlier mark cited in opposition has a reputation; secondly, that the marks at issue are identical or similar; and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”

The Court of cassation puts an end to the French case law hesitations by stating, in 3 decisions, that eBay is an editor.

Web host or editor? Indeed, two qualifications are possible regarding the eBay kind of commercial websites. This duality comes from the law on confidence in the digital economy (known as the French acronym LCEN), June 24^th 2004, which establishes a liability exemption regime for web hosts. Thus, the commercial website which is not aware of the illegal nature of the products which are bought and sold on its platform can’t be held liable: it is deemed as being a web host. On the contrary, the editor, which is totally aware that the traded goods are counterfeits, is considered as being fully accountable.

If the Court of Justice of the European Union recognized that eBay is a web host on the 2^nd of July 2011, the French case law was for its part more hesitant. For instance, the Paris Tribunal de Grande Instance held that eBay could benefit from the web host status on the 13^rd of March 2012, while the Reims Court of appeal stated that the website was liable in a 20^th July 2010 case.

Those three decisions clarify that context by asserting that “the eBay companies did not only operate a simple web host activity but they, irrespective of any option chosen by the clients, took an active role likely to confer them the knowledge or the supervision of the data they stocked and to deprive them from the liability exemption regime”. As eBay cannot hide behind that editor favorable status anymore, it will now be totally liable for trademark infringements perpetrated with its editor support.

It is therefore recommended to set up a systematic trademarks watch on eBay which is offered by our IP law firm thanks to its DrefusIPweb® platform.

If one has to give a bird eye’s view of last ICANN meeting it should keep in mind that it was change which leads the way. We cannot but welcome the nomination of the new CEO, Fadi Chehadé, former engineer for the Bell Labs, IBM and Vocado LLC recently, who will occupy his new position on the 1^st of October 2012 just two weeks before the Toronto meeting of the ICANN (from the 14 to the 19 of October). The challenge is high for the new CEO who will at the same time have to cope with the launch of the new gTLD’s and governance problems which permeates the ICANN.

The stakes which were dealt during the meeting can be epitomized as follows:

-The batching vanishes away:

While the Prague meeting was beginning, the batching system and its digital archery was suspended by the ICANN. Highly criticized before its implementation and at its early beginnings, 10 days before the close of the system the candidates faced a real vacuum. For your information, only 20% of the applicants shoot in the target and entered a timestamp. Alternatives were on the table and the final decision was to put an end to the batching system. A real earthquake to say the least, nonetheless, two paths are now on the table:

1. The simultaneous treatment of all of the candidatures within a period of 15 months,
2. A treatment of the candidatures in three batches, 5 months for each batches.

Another question lies in the backdoor, those of the release of the candidatures once evaluated:

-the publication can be done in batches, each time a batch is done the release can be completed. However, this system can be unfair, as first applicants will benefit from their early publication;

-the publication of all candidatures evaluated simultaneously, this solution can be deemed to be fair but can postpone the timeframe.

–A delay to be foreseen for the intervention of the GAC:

The GAC announced that it will not make Early Warnings before the next ICANN meeting in Toronto in October 2012. Moreover, the GAC will not give any advice on contentious applications before the Asia-Pacific meeting which will be hold in April 2013!

–Trademark Clearinghouse on the rails for October 2012:

The Trademark Clearinghouse, the repository for rights owners run by Deloitte and IBM will open its gates in October 2012 as announced. Tests are to be conducted as early as July 2012 for a suitable implementation next Fall.

–The URS (Uniform Rapid Suspension System): cost to be reevaluated and service providers still lacking:

At the inception the creation of the URS was suppose to meet several ends among them flexibility, low-costs and protection of registrant with a legitimate interest. However, the target of the low-costs comprised between 300 and 500$ sounds quite tricky and impossible to reach in practice. During the ICANN meeting in Prague, a conference tackled the issue of the costs which are likely to be reevaluated. The idea came up that if needed, subventions can help to administer the service. The URS is a post-delegation procedure which can be used by third parties once the new gLTD’s will be attributed but which cannot lead to a cancellation or a transfer of the domain name, the domain name is just blocked. The service providers are scarce given the low-cost of the procedure which does not help to provide a sufficient background to issue tailored decisions.

–Objection mechanisms: service providers in the starting-blocks:

The ICC has jurisdiction over the Limited Public Interest Objections and the Community Objection, the WIPO over the Legal Rights Objection, for which Nathalie Dreyfus has been appointed as a Panelist, and the ICDR for the String Confusion, all the service providers are ready. It is already possible to file an objection since June 13, 2012 where new gTLD’s candidatures were released. All the objectors must note that they have nearly seven months, without cap, to file an objection. Nonetheless, the decisions of the service providers will be issued only two weeks after the release of the Initial Evaluation which is due to take place in December 2012/January 2013.

A rainy sky overhangs the new gTLD’s launch. Notwithstanding, several paths remain to speed up the process, lobbying occurs as one of these. The newly created New TLD Applicant Group (NATG) is a group which emerged during the ICANN meeting, and which deserves to be glanced at.

With the launch of the digital archery on the 8^th of June[1], the question is raised whether the mountain brought forth a mouse! The batching system run for not less than ten days and a member of the GAC already raised concerns about the whole system. The batching system is a catalyst of issues. The senior advisor to the Government of Canada within the GAC, Heather Dryden[2], in a letter sent on the 17^th of June to the ICANN pinpointed that the batching system may have a significant impact on the timeframe of the commissioning of new gTLD’s. Heather Dryden put it bluntly and highlighted the imperious necessity to “fully consult with the community before taking decisions of this magnitude”[3]. According to the Canadian advisor, the loopholes of the system outperform the advantages. The GAC is in favor of a simultaneous treatment of all the candidatures for three main reasons: efficacy, consistency and length.

The GAC will try to push in favor of this unique assessment and try to make its voice heard during the ICANN Prague meeting which will take place at the end of the week from the 24th to the 29^th of June. A genuine frond could be foreseen in the next few days.  Could the timeframes be kept?

[3] The letter dated June 17, 2012 can be download thanks to the following link: http://www.icann.org/en/news/correspondence/dryden-to-crocker-17jun12-en