Domain names in <.suck> : between attack to brand image and freedom of expression

Written by Dreyfus26/01/2021

Sources: Domain Incite, Free speech, or bad faith? UDRP panels split on Everything.sucks domains, Oct. 22, 2020:

Free speech, or bad faith? UDRP panels split on Everything.sucks domains

Mirapex.sucks, Case n° 103141, 2020-06-29 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103141
Bioderma.sucks, Case n° 103142, 2020-07-01 : https ://udrp.adr.eu/adr/decisions/decision.php ?dispute_id=103142DNS News No. 270, Oct. 2020

The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.

During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.

Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.

In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.

On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.

The opportunity to add a registered domain name to the complaint after the filing

Written by Dreyfus22/01/2021

If Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.

On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.

In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;

* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.

Thus, it seems possible to add a reserved name to a complaint after the filing.

Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.

All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.

In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.

Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.

A famous applicant yes, but in the common name : the difficult proof of bad faith

Written by Dreyfus22/10/2020

(WIPO, Arbitration and Mediation Center, August 4, 2020, Case No. D2020-1543, Fundación Trinidad Alfonso Mocholí, Fundación de la Comunitat Valenciana v. Jack Zhang)

In a UDRP proceeding, the Complainant is required to establish that the disputed domain name was both registered and used in bad faith by the Respondent. To do so, it is imperative to establish the respondent’s knowledge of the Complainant’s rights.

The charity organisation, Fundacion Trinidad Alfonso Mocholi, filed a UDRP complaint because of the registration of the domain name <juanroig.com>. This association was founded by Mr. Juan Roig, who is particularly well known in Spain as a businessman. He presides over the largest supermarket chain in Spain and has already been received by the Spanish royal couple.

The association’s activities include programs to encourage the participation of children in sports activities. It carries out this activity under the name “Mecenazgo Deportivo Juan Roig”. It is also the owner of a semi-figurative Spanish trademark “MECENAZGO DEPORTIVO JUAN ROIG” registered on April 17, 2020 for goods and services in classes 16, 25 and 41.

The defendant in the action, located in the United States, is active in the purchase and sale of domain names. It reserved the domain name in question on October 27, 2014, before the registration of the plaintiff’s trademark. The disputed domain name does not refer to any site offering goods or services, but is offered for sale for an amount of 2,500 USD.

The expert admits the existence of a risk of confusion between the domain name and the subsequent trademark. Let us remind that the date of registration of the trademark is irrelevant for the analysis of the likelihood of confusion: only a “side-by-side” comparison is made. The expert takes into account, among other things, the fact that the expression “Mecenazgo Deportivo” is generic, since it means “Sports Sponsorship”.

The question of the legitimate interest of the defendant then arises.

The complainant states that it did not authorize the Respondent to reserve the disputed domain name. In return, the respondent argues that the practice of buying and reselling domain names is not illegitimate. He explains that a search on the LinkedIn site shows that there are more than 1200 members registered in Spain whose name is, or includes, “Juan Roig”. He argues that about 10% of the world’s population is on LinkedIn and infers that there are about 12,000 people in Spain who would be named Juan Roig. For him, the domain name is therefore composed of generic terms. This daring mathematical calculation is naturally not admitted by the expert, who notes the strong presence of people named Juan Roig in Spain or Latin America.

However, the expert believes that it would be necessary to demonstrate that the domain name is really used for its descriptive meaning in order to be able to refute a prima facie case of absence of legitimate interest. This was not the case here since the name is simply offered for sale, without any other use. The expert, therefore, asserts that the absence of legitimate interest is well demonstrated.

Furthermore, we may wonder about the descriptive use of a patronymic name, which seems complicated, unless a site is dedicated to statistics on the use of the name or to a specific person.

Regarding bad faith, the plaintiff argues that it was not a coincidence that the defendant registered the disputed domain name shortly after Mr. Juan Roig was ranked as the second wealthiest person in Spain.

The expert reminds that, in theory, bad faith will not be recognized when the trademark invoked in support of the complaint is subsequent to the registration of the disputed domain name. Except when it is proven that the defendant knew about the plaintiff and his emerging or future trademark rights.

The defendant purchases domain names in volume and could have been aware of the existence of the plaintiff if the domain name in question had been reserved as a result of its enter into the public domain (known as “drop catching”). But, this is a new registration. However, the expert notes that the defendant refused an offer to buy back the name, submitted by a third party, for the sum of 300 USD, which is almost 15 times higher than the price of a name reservation in <.com>. It is, therefore, clear that he wanted to make a more profitable profit from it.

Nevertheless, the defendant argues that he had never heard of the plaintiff or his trademark and that most of the publications that are supposed to support this fame are in Spanish language, which he does not speak.

The expert notes that some of these publications are in English and come from well-known newspapers such as the Wall Street Journal, but these publications are aimed at a limited audience, from the financial services sector.

The expert deduces that despite Mr. Juan Roig’s reputation, this is only demonstrated in Spain and he notes that his name is reasonably common among Spanish speakers.

The complaint is therefore dismissed.

Thus, the popularity of a public person is not sufficient to demonstrate the bad faith of the holder in the registration and use of a domain name. It is necessary to try to put oneself in the place of the reservist. If he comes from abroad, is he reasonably likely to know the person whose fame is being claimed?

Adaptation of decisions in case of identity theft’s suspicion

Written by Dreyfus21/10/2020

WIPO, Arbitration and Mediation Center, June 15, 2020, No. D2020-0646, Wintrust Financial Corporation v. Domain Administrator, Se PrivacyGuardian.org / Name Redacted

WIPO’s case law databases have no fewer than 170 hits when there is a research for decisions against “Name Redacted”, a term used when experts decide not to include the name of the defendant in the complaint. This occurs when the defendant appears to have impersonated a third party and in order to protect his or her personal data.

Recently, in a case involving the domain name <wintrustexpertoptions.com>, an obvious case of cybersquatting where the defendant tried to make the public believe that they were related to Wintrust Financial Corporation, the expert made the decision not to mention the name of the defendant in the decision.

In fact, in the course of the proceedings, the Center received an e-mail from a third party regarding the identity of the Respondent, indicating that it was a case of identity theft. This communication was forwarded to the parties by the Center, which also contacted the defendant at another e-mail address, which had not been taken into account at the start of the proceedings, to ask them if they wished to file a response to the complaint, which they did not.

Even if the issue of impersonation is not proven with certainty, the expert, as a precaution, chooses not to expose the name of the defendant in the decision.

However, the expert includes an unpublished annex to the decision that includes the name of the defendant. An annex that the Center may forward to the Registrar. This technique has also been used in other decisions (V. ASOS plc. v. Name Redacted, WIPO, No. D2017-1520; Allen & Overy LLP v. Name Redacted, WIPO, D2019-1148).

In addition to the procedural adaptations that identity theft generates, this decision is an opportunity to remind the right holders to be vigilant with the naming charter established for the registration of domain names. For example, an inactive name reserved in the name of a subsidiary could appear legitimate. However, it could be a case of identity theft. This is why it is imperative, in order to protect the company, its managers and its customers, to establish the rules of good conduct regarding the reservation of domain names. In particular, the e-mail address used must be a generic address in the name of the company, such as domainames@nomdelentreprise.com, and a dedicated registrar must be designated.

United States: what are the options to protect a trademark?

Written by Dreyfus31/08/2020

When a company wants to export its activity to the American market, it is essential that it think about protecting its brand. Indeed, the protection of a trademark being territorial, the registration of a trademark in France will have no value in another country. There are several ways to protect your trademark in the United States.

National registration

The registration of a trademark in the United States is done at the national trademark office: the USPTO (United States Patent and Trademark Office).

Types of registration

There are two types of registrations: the registration on the “Principal register” and the registration on the “Supplemental register“.

Registration in the principal register

A trademark registered in the principal register provides maximum protection because its owner is presumed to be the sole owner, which gives him the possibility to sue any person using an identical or a similar trademark.

Furthermore, registration in the principal register provides the owner with the advantage of benefiting, in the event of a dispute, from a presumption of validity of his trademark.

To register a trademark with the USPTO on the principal register, several conditions must be met, the most important being the criterion of distinctiveness.

Registration in the supplemental register

Registration on the supplemental register is available when a trademark is not considered sufficiently distinctive. Such a registration does not provide as much protection as a registration the principal register.

Modes of registration

There are also two modes of registration: filing based on Intent-to-Use and filing based on Prior Use

Intent-to-Use Application

This registration is made when the trademark has not yet been used on the US market. However, at the time the trademark is filed, the owner must start using the trademark in the United States within six months.

The protection of the trademark extends over a period of 10 years, renewable indefinitely.

Use in Commerce Application

This system makes it possible to register a trademark whose use is already effective. However, the applicant must provide proof of use of the trademark at the date of filing. This proof can nevertheless be difficult to provide.

The USPTO allows proof of use of a trademark when :

– the mark is inscribed on the goods or the packaging of the articles, or is related to the goods and services;

– and the goods and services to which the mark is affixed are sold in at least two states in the United States.

Protecting your trademark in the United States: is the Madrid System the best option?

The Madrid System allows a national trademark to apply for protection in a maximum of 122 member countries of the Madrid Union by paying a single set of fees, based on a single application. It is a single procedure that results in a bundle of national trademarks. This registration system is managed by the World Intellectual Property Organization (WIPO).

The use of this international trademark system has several advantages for the owner of a trademark: it is necessary to prepare only one file, to be submitted to a single office, in a single language and to pay a global fee. It is a simplified and centralized procedure, which generally leads to a reduction in costs. It also makes it possible at any time to extend the scope of protection to other member countries of the Madrid Union that were not initially designated in the application. It is particularly interesting when one wishes to extend the protection of a trademark in different countries.

The United States became party to the Madrid Protocol on November 2, 2003. It is therefore part of the Madrid Union.

When a company exports internationally and wishes to protect its trademark in different countries, it can choose, often rightly since it has many advantages, to use the Madrid System. However, this is not necessarily the best option to protect a trademark in the United States.

However, it should be remembered that the Madrid System does not bypass local laws, objections may be raised by national offices as well as third parties within each country concerned and no application is guaranteed to succeed.

International applications cannot be entered in the Supplementary Register.

In addition, for a period of five years, the international trademark is obligatorily attached to a national trademark, for example a French trademark. If the latter is cancelled, all designations in the different countries of the Madrid Union are cancelled with it.

Several options are therefore available to a trademark owner who would like to protect its trademark the United States. Depending on the level of its international exploitation and the characteristics of the trademark, the possibilities, costs and conditions of each system will have to be studied and the one that is most suited to the project will be selected.

Liability of online platforms operators : where do we stand?

Written by Dreyfus31/08/2020

Operators of online hosting platforms will soon know exactly what responsibility to assume for illegal or hateful content published on these platforms. The current climate seems to be very conducive to clarifying the nature and extent of their liability.

In this respect, two schools of thought clash: for some, it is necessary to impose obligations to control the content published on these platforms, but for others, this would reflect the attribution of a new role to these operators, which has not been given to them on a basic level.

“There would be a risk that platform operators would become judges of online legality and a risk of ‘over-withdrawing’ content stored by them at the request of users of their platforms, to the extent that they also remove legal content,” said Advocate General Henrik Saugmandsgaard Øe, who presented his conclusions before the Court of Justice of the European Union (CJEU) on July 20, referring to request for preliminary ruling a preliminary ruling made by the Bundesgerichtshof, the German Federal Court of Justice, on two disputes brought before the German national courts.

The first dispute (1) was between Frank Peterson, a music producer, and the video-sharing platform YouTube and its parent company Google over the users posting , of several phonograms without Mr. Peterson’s permission, to which he claims to hold rights.

In the second (2), Elsevier Inc, an editorial group, sued Cyando AG, in connection with its operation of the Uploaded hosting and file-sharing platform, over the uploading, again by users without its authorization, of various works to which Elsevier holds exclusive rights.

In said requests for preliminary ruling, it is a question of knowing whether the operator of content platforms such as YouTube, performs acts of communication to the public pursuant to Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, a directive that was invoked against YouTube.

The answer is negative, according to the Advocate General, who invites the CJEU to bear in mind that the legislator of the Union has specified that the “mere provision of facilities intended to enable or carry out a communication does not in itself constitute a communication within the meaning of [this directive]”. According to the Advocate General, it is, therefore, important to distinguish a person performing the act of “communication to the public”, within the meaning of the Article 3(1) of the Directive 2001/29, from service providers, such as YouTube and Cyando, who, by providing the “facilities” enabling this transmission to take place, act as intermediaries between that person and the public. On the other hand, a service provider goes beyond the role of intermediary when it actively intervenes in the communication to the public – if it selects the content transmitted, or presents it to the public in a different way from that envisaged by the author.

Such a conclusion would lead to the non-application of the Article 3(1) of the Directive 2001/29 to those people facilitating the performance, of unlawful acts of “communication to the public”, by third parties.

Moreover, it is a question of knowing whether the safe harbour – in the case of “provision of an information society service consisting in storing information provided by a recipient of the service” – provided for in the Article 14 of the the Directive on electronic commerce n°2000/31 is in principle accessible to these platforms (according to the Advocate General, it is).

This provision provides that the provider of such a service cannot be held liable for the information that it stores at the request of its users, unless the provider, after becoming aware or conscious of the illicit nature of this information, has not immediately removed or blocked it.

However, according to the Attorney General, by limiting itself to a processing of this information that is neutral with respect to its content without acquiring intellectual control over this content, the provider such as YouTube, cannot be aware of the information it stores at the request of the users of its service.

The CJEU will, therefore, have to rule on these issues in the coming months.

Furthermore, it should be noted that in 2019, the Union legislator adopted the Directive No. 2019/790, not applicable to the facts, on copyright and related rights in the single digital market, modifying in particular the previous Directive of 2001. A new liability regime was introduced in Article 17 for operators of online hosting platforms.

Sources :

https://curia.europa.eu/jcms/upload/docs/application/pdf/2020-07/cp200096fr.pdf

C-682/18 Frank Peterson v Google LLC, YouTube LLC, YouTube Inc., Google Germany GmbH

C-683/18 Elsevier Inc. v Cyando AG

Sale of the domain name extensions: .cars, .car and .auto at auction

Written by Dreyfus23/07/2020

The domain name extensions (gTLDs) “.cars”, “.car” and “.auto” are about to be auctioned on July 13, 2020. Launched in 2015, these extensions have been at the forefront of innovation in the domain name and automotive marketing. They have been used around the world by dealerships, startups and major automotive technology companies.

After a five-year partnership, and more than $11 million raised, XYZ, a company offering new domain name options, and Uniregistry, both a registrar and a domain name registry, have jointly decided to divest this investment.

The auction will be conducted by Innovative Auctions, an independent auction consulting firm, and all assets to be auctioned will include the extensions in question, as well as all intellectual property rights, trademarks, social network accounts and high-value domain names such as <electric.car> and <rental.car>, which are currently reserved by Uniregistry.

It should be noted that this is the first gTLD auction in which anyone can participate. Interested parties can contact cars@innovativeauctions.com for more information.

Figurative trademarks: be aware of the extent of your protection

Written by Dreyfus17/07/2020

The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.

The company Compagnie Financière de Californie (“Compagnie de Californie”), which specializes in street wear chic clothing, is the owner of the trademarks on the sign, in particular for clothing products.

In 2013, the company noted that International Sport Fashion, also active in the fashion industry, had registered and used a trademark that it believes to be similar to its own:

The signs in question have the shape of an eagle’s head, without detail, reproduced in black and white within a circle.

In order to obtain compensation for the damage it considers to have suffered, Compagnie de Californie brought an action for infringement.

After having been dismissed at first instance and on appeal, the company turned to the Court of Cassation, which referred the case back to the trial judges after partial cassation.

The referring Court of Appeal first compared the trademarks in question. Its analysis is rigorous, particularly from a conceptual standpoint: it considers that the trademark of Compagnie de Californie refers to “the dark side of the bird of prey while the other refers to the image of a much less aggressive bird” (certainly due to the presence of a closed beak).

The court points out, among other things, that visually, these birds’ heads are not facing the same direction and that one has the beak closed and the other open.

On the phonetic level, the court notes, unsurprisingly, that the mark at issue will be pronounced “Eagle Square” in reference to the verbal element it contains, which will not be the case for the earlier mark.

The court, therefore, considers that there is no likelihood of confusion between the marks.

Next, it examines the question of the exploitation by International Sport Fashion of its mark for clothing products. The Court takes into account all possible elements such as the packaging which contains the goods. The name “EAGLE SQUARE” is affixed to the packaging; it, therefore, considers that there is no likelihood of confusion in the minds of consumers.

It also states that the contested sign which appears by itself on some of the articles is each time bicoloured, “inducing a caesura in the sign”, which gives an overall impression, very different from the earlier mark.

The court, therefore, did not grant the applications of Compagnie de Californie.

Thus, with respect to figurative marks, it is necessary to meticulously estimate the chances of success of an infringement action, since great similarities are generally required to recognize the likelihood of confusion.

This case shows that even marks with a comparable style (presence of a bird in a circle, with only the head entirely painted black) can coexist in the market.

It is questionable whether the Court of Appeal would have taken a different approach had International Sport Fashion affixed the only black and white eagle head to its products. The question also arises as to whether the outcome might have been partially different had California Company also registered, as a trademark, its coloured eagle (which can be found in red on its official website https://www.compagniedecalifornie.com/).

Therefore, in addition to a detailed analysis of the chances of success before bringing an action, it is also necessary to protect the trademark as exploited, taking into account its variants, so as to benefit from the widest possible scope of protection.

The lovelinesss of the European Union: to obtain in one Member State a declaration of counterfeiting for acts committed in another Member State

Written by Dreyfus06/07/2020

CJEU – September 5, 2019

AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree c/. Heritage Audio SL, Pedro Rodríguez Arriba,

It is possible to bring an actionbefore a national court with the purpose proving an infringement of the EU trademark in that Member State, even if the third party has advertised and marketed his goods in another Member State.

That is the answer given by the Court of Justice of the European Union to the preliminary ruling question concerning the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009 of February 26, 2009 on the European Union trade mark.

That reference was made in the context of a dispute between the parties:

– The applicants : AMS Neve, a company founded in the United Kingdom, for manufacturing and marketing audio equipment, represented by its director Mr Crabtree. Barnett Waddingham Trustees “BW Trustees” is the trustee;

versus

– The defendants : Heritage Audio, a Spanish company also marketing audio equipment, represented by Mr Rodríguez Arribas

concerning an infringement action for alleged infringement of rights conferred, inter alia, by an European Union trade mark.

The applicants are the owners of the European Union trademark and of two trademarks registered in the United Kingdom.

Having discovered that Heritage Audio was marketing imitations of AMS Neve products bearing or referring to a sign identical or similar to the said EU and national trademarks and was advertising those products, they brought an action for infringement of an EU trade mark before the Intellectual Property and Enterprise Court in the United Kingdom.

In order to prove the infringement in the United Kingdom, the applicants provided the documents in support of their action, including in particular the contents of Heritage Audio’s website and its Facebook and Twitter accounts, an invoice issued by Heritage Audio to an individual, resident in the United Kingdom.

Then, in order to prove the infringement in the European Union, they provided screen shots from that website showing offers for the sale of audio equipment bearing a sign identical or similar to the European Union trademark. They underlined the fact that these offers are in English and that a section entitled “where to buy” is available on the website, listing distributors in various countries. In addition, they argued that Heritage Audio accepts orders from any Member State of the European Union.

While the Court agreed to rule on the protection of national intellectual property rights, it found that it lacked jurisdiction to rule on the infringement of the EU trade mark at issue.

The appellants appealed against that judgment to the United Kingdom Court of Appeal, which decided to enforce a stay on proceedings and to refer the following questions to the Court for a preliminary ruling:

– Does a national court of a Member State A have jurisdiction to rule on an action for infringement of the EU trademark on account of its advertising and marketing of goods carried out in Member State B?

– If so, what criteria should be taken into account in determining whether the company has taken active measures regarding the infringement?

The answers given by the CJEU are as follows:

– the plaintiff, depending on whether he chooses to bring the infringement action before the EU trademark court of the defendant’s domicile or before that of the territory in which the act of infringement was committed or threatened to be committed, determines the extent of the territorial jurisdiction of the court seized ;

o when the infringement action is based on Article 97(1), it shall cover acts of infringement committed on the territory of the Union (where the action is brought before the court of the defendant’s domicile or, if the defendant is not domiciled in the European Union, in the State in which he is professionally established);

o when it is based on paragraph 5 of the same Article, it shall be limited to acts of infringement committed or threatening to be committed within the territory of a single Member State, namely the Member State of the court seized ;

– in order to ensure that the acts of which the defendant is accused were committed in the EU , it is necessary to determine where the commercial content was actually made accessible to consumers and professionals for whom it was intended. Whether such advertising and offers subsequently had the effect of purchasing the defendant’s goods, is on the other hand, irrelevant.

In the present case, the advertisements and offers referred to by the applicants were aimed at consumers and/or professionals, in particular in the United Kingdom.

In those circumstances, the Court considers that the applicants have the right to bring an infringement action against that third party before a EU trademark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.

This possibility of bringing an infringement action before any competent national court to rule on acts of infringement committed in any Member State is very useful in particular to optimise the costs of proceedings, depending on the national regulations. France, for example, offers irrefutable methods of collecting evidence, such as a bailiff’s report, to establish facts of infringement, at attractive prices.

UDRP Procedure: manage a domain name portfolio with attention

Written by Dreyfus03/07/2020

WIPO, Arbitration and Mediation Center, March 10, 2020, No. D2019-3175, Orfeva SARL v. Vianney d’Alançon.

The company Orfeva has specialized for many years in baptism medals. Since 2010, it has been using the domain name ” medailledebapteme.fr ” as the domain name for its official website. Orfeva is also the owner of the French trademark “MEDAILLEDEBAPTEME.FR”.

Orfeva filed a UDRP complaint before the WIPO Arbitration and Mediation Center against the domain name <medailledebapteme.com>, claiming that it infringes its rights, and asking for a transfer.

This domain name was initially registered on July 21, 2010 by Mr. de Graaf, legal representative of the applicant, then, due to a non-renewal in 2016 – for reasons not explained – this name fell back into the public domain and was reserved on September 26, 2016 by Mr. Vianney d’Alançon to designate his own website for the sale of jewelry and silverware. Mr. Vianney d’Alançon has been the owner of the French trademark “1000 MEDAILLES DE BAPTEME.FR” since December 2015.

The applicant argued that the defendant registered the disputed domain name with perfect knowledge of the existence and use of its earlier mark. Consequently, it considers that the defendant sought to generate confusion with its earlier mark in order to try to divert consumers to its own internet site, by offering them the same goods on a very similar site. In addition, the applicant states that has filed an applicaion by letter, through its Counsel, for the restitution of the disputed domain name, without receiving a reply from the defendant.

The defendant, for its part, maintains that it purchased the domain name <medailledebapteme.com> because it is descriptive of his products and not in order to disrupt the applicant’s business. He argued that the expression ‘baptismal medal’ in everyday language cannot be the subject of a monopoly, being the generic, necessary and customary designation of baptismal medals in the jewellery sector.. Furthermore, he adds that he replied to the letter from the applicant’s counsel, refusing to uphold his claims. Finally, the defendant argues that there has been no demonstration of customer poaching. In that regard, it states in particular that the applicant’s business is not disrupted by the operation by a third party of the domain name <medaille-de-bapteme.fr> which predates the applicant’s domain name <medaille-de-bapteme.fr>.

The applicant’s position is not followed by the expert who considers that the domain name has not been registered and is not being used in bad faith.

Indeed, the name is descriptive of the Respondent’s activity, which justifies the registration of the domain name. The applicant’s knowledge of prior trade mark rights cannot affect the legitimacy of that registration.

Furthermore, the expert endorses the Respondent’s argument that it was not intended to disrupt the applicant’s business, pointing out that several companies specialising in the sale of christening medals and using very similar domain names coexist peacefully.

The expert concludes that the complaint must be rejected. In addition, he states that there is no evidence or reason to suspect any customer poaching or disruption of the applicant’s business operations. A court of law may rule on this matter, if necessary.

It should therefore be borne in mind that the abandonment of a domain name describing the activity, especially if it includes the highly prized top level domain “.com”, will most certainly be registered by a third party as soon as it falls into the public domain. Indeed, this type of name is generally very coveted, especially because it can enjoy high visibility on search engine results, corresponding to the keywords that Internet users can search for.

The same applies to domain names that reproduce the company’s brand and especially its corporate brand. Even if it is decided to no longer use a name, it may be advisable to keep it as a defensive measure to prevent a third party from taking it over.

Finally, it should be recalled that the parties must be attentive to the arguments they present before the WIPO, at the risk of departing from the UDRP’s legal regime. Unlike the judge, the expert does not have the power to declare a trademark invalid, nor to conduct investigations for unfair competition.

Keywords: generic designation of domain name – bad faith – trademark right – domain name – unfair competition

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