The DNS NEWS report No. 271 highlights the overall criticism of ICANN solution for not intervening as much as its powers allow in Internet security issues, even though the DNS breaches do not decrease the number of hits. A sort of criticism derives from this observation: should ICANN become a kind of Internet welfare state or should it remain in the background, which would be recommended by the defenders of Internet neutrality.
It should be noted that in 2018, ICANN solution had already undertaken measures to make the Internet a little more secure, by changing the cryptographic key used to protect the Internet’s address book, the DNS (Domain Name System). However, further efforts are expected.
Domain Name System. – V. ICANN, 16 sept. 2018, Approved Board Resolutions [ R]egular Meeting of the ICANN Board).
With more than 91% of market share, Google is the most used search engine in France. Knowing that it is rare to consult results other than those of the first page, optimizing its ranking is a key issue. Natural results can therefore be negatively impacted: a well optimized site can be better referenced than a more relevant site.
However, Google has not said its last word on the subject yet and has announced the change of its algorithm, in May 2021, in order to favour the catch of the Essential Web Signals and more specifically, the time it takes for a site to load, its interactivity and the stability of the content while it loads. Google already gives advice on this subject on its Google Search Central platform.
One of the objectives of this approach is to counter cases where domain names that were previously exploited and well placed on the podium of search engine results have fallen back into the public domain and have been retrieved by domainers to resolve to parking pages. These names that no longer present attractive content for Internet users should not be the first to appear in the list of results.
Sources: Emarketerz.fr, 20 mai 2020, Parts de marchés & classement des moteurs de recherche les plus utilisés en 2020, S. Fakir Google Search Central, SEO pour les utilisateurs expérimentés, Comprendre la convivialité des pages dans les résultats de recherche Google Domain Name Wire, 10 nov. 2020, « Page experience » to impact Google search rankings starting in May, A. Allemann
Source: WIPO, Arbitration and Mediation Center, Nov. 24, 2020, case DRO2020-0007, NAOS c/ Bioderm Medical Center
The Biodermabrand has a world-wide reputation but was this reputation already established in Romania at the beginning of the years 2000? The Bioderm Medical Center, a clinic based in Romania, answers no to this question.
NAOS, owner of the Bioderma trademark, has detected the registration by the Centre Médical Bioderm of a domain name reproducing its trademark, namely <bioderma.ro>. However, said domain name is quite old as it has been registered on February 24, 2005.
On September 4, 2020, NAOS filed a complaint with the WIPO Arbitration and Mediation Center to obtain the transfer of this domain name. This complaint is based on an International trademark Bioderma, protected in Romania since 1997.
Nonetheless, the defendant claims to have used the sign Bioderma as its business name for several years, hence the registration of the domain name <bioderma.ro> and the subsequent change of its coporate name.
The expert in charge of the case is particularly thorough in its assessing whether the defendant has the legitimate interest and rights in the disputed domain name or not.
He considers that even if the latter produced a Kbis extract showing that its commercial name, in 2003, was indeed Bioderma, it is insufficient to prove a legitimate interest or rights on the domain name. The defendant should have brought evidence that it was commonly known by the Bioderma name.
The expert also notes that the disputed domain name resolves to an inactive web page and therefore concludes that there was nobona fide use of the name in connection with an offer of goods and services and no legitimate non-commercial use of the name.
It is however on the ground of bad faith that the expert finally decides in favour of Bioderm Medical Center.
The latter notes that the International registration of the applicant’s Bioderma trademark is several years older than the disputed domain name and that this trademark is currently renowned. However, the evidence brought by the applicant are deemed insufficient to demonstrate the possible or actual knowledge of this trademark by the defendant in 2005, at the time of registration of the disputed domain name.
Indeed, although the earlier mark was established in the 70’s in France and was first registered in Romania in 1997, the first subsidiary of the applicant, established in Italy, only opened in 2001: the true starting point of the brand’s internationalization.
Yet, the defendant founded the company in 2003 and carried on its business under the name Bioderma until 2008.
From there, it is not possible to establish that it had targeted the company or its trademark to mislead or confuse Internet users. Moreover, the defendant did not conceal its identity and responded to the complaint, which shows good faith.
This decision is a reminder that it is essential to place oneself at the time of domain name registration in order to assess the aim of the registrant. Even if the prior trademark enjoys a world-wide reputation on the day of the complaint, the dive into the past is inevitable: it must be determined whether the defendant, located in a certain country, had knowledge of the rights or reputation of the trademark. In this case, the expert took into account, among other things, that the defendant used the commercial name “Bioderma” in 2005. Therefore, it is essential to investigate on the registrant and their situation at the time of registration of the domain name, here particularly old. To that end, seeking legal advice from an IP lawyer specialized in UDRP procedures is strongly recommended.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.
Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.
ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.
This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.
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.
Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.
In February 2020, the applicant allegedly asked one of its employees to proceed with the registration of the name <cobrajetaviation.com> on his behalf. The latter would thus have reserved the name using his personal credit card first, and being reimbursed by the applicant later. When the job contract ended, he would have refused to transfer to the applicant the information she needed in order to take control over the domain name and its related website. This is a very common dispute and, once again, it give us the chance to recall the importance of establishing naming charter within the company and the importance of assuring the respect of good practices: each domain name must be reserved by the company and with a generic e-mail address of type nomsdedomaine@entreprise.com.
Moreover, since this dispute involves a contractual dispute rather than a dispute over the on a classic case of cybersquatting, the expert rejects the complaint believing that it is for the courts to deal with this matter which “generates questions of contractual breaches, breaches of contract, breaches of fiduciary duties and potentially questions related to local labor laws”. The expert also said and pointed out that even if he could have known about the case on the merits, he would certainly have rejected the complaint, for two major reasons.
On the one hand, in order to prove its right on the trademark, the applicant has submitted the certified translation of a trademark application in Egypt, filed on January 26, 2020 and not yet registered. The expert also notes that a certified translation is not enough to determine who is the true owner of the trademark and that the copy of the original document was missing as wall.
On the other hand, the expert believes that the applicant’s arguments are insufficient to demonstrate the defendant’s bad faith. He did not gave proof of the instructions addressed to the employee; therefore, it is not possible to determine whether he or she has complied with them. However, the UDRP procedure involves proving both the registration and the use of the name in bad faith.
Therefore, it is necessary to ensure that the complaint has a chance to succeed within the framework of the UDRP action, that it does not go beyond its scope and prepare the argument and the most important thing is to provide evident proof of its trademark right; presenting the request for a trademark that does not confer any protection. It should be also noted that the applicant gave an insufficient presentation of herself within the complaint, at the point that the expert indicates that they “presume” that the applicant is active in the aviation sector.
Source: WIPO, Arbitration and Mediation Center, Nov. 5, 2020, aff. No. D2020-2024 Cobrajet, Inc. v. The Endurance International Group, Inc,
Guerlain filed a successful appeal before theParis Court of Appeal. The court rendered its decision on September 22, 2020, ruling in its favour: the sign “Le Frenchy” is sufficiently distinctive and is not descriptive, for the concerned goods.
In the contested decision, the Director of the INPI had considered that English is predominant in everyday language and that many expressions including the term “French”, such as “French manicure” or “French tech”, are commonly used in commerce. He added that the addition of the vowel “y” to the adjective “French” does not change the nature of this slang Anglicism.
Guerlain states that the term “Le Frenchy” evokes a “little Frenchman” in slang and that this reference to the French spirit alone is not enough to deprive the sign of distinctiveness.
The Court of Appeal agreed with Guerlain’s arguments, holding that “Le Frenchy” evokes “a person representing a style, a French way of life, a spirit” and not directly the origin of the good.
The combination of the article “le” and of the term “Frenchy” is unusual and arbitrary in relation to the goods in question. Therefore, the sign does not lack of intrinsic distinctiveness within the meaning of Article L.711-1 of the Intellectual Property Code. Similarly, it is not descriptive, within the meaning of Article L.711-2 b), of the goods concerned, as this trademark does not designate a characteristic of the goods, but rather aims to qualify the person who might consume the goods.
It might be assumed that the trademark was saved because the sign “Le Frenchy” includes a form of slang which is not directly related to the goods in question.
The decision might have been different if the sign at stake mainly comprised the word “French”.
For example, theEuropean Union Intellectual Property Office (EUIPO) rejected the trademark ‘LIVE THE FRENCH WAY’ on December 9, 2019 for lack of distinctive character in relation to the services covered in classes35,39 and43, as it would be perceived as a “laudatory promotional slogan”.
In any event, in case of doubt as to the validity of a sign, it is advised to file the projected trademark in semi-figurative form, if it is intended to be used in a stylised manner. Graphic elements increase the distinctiveness of a sign.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.
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.
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 conclusionsbefore 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 Uploadedhosting 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.
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The DNS NEWS report No. 271 highlights the overall criticism of ICANN solution for not intervening as much as its powers allow in Internet security issues, even though the DNS breaches do not decrease the number of hits. A sort of criticism derives from this observation: should ICANN become a kind of Internet welfare state or should it remain in the background, which would be recommended by the defenders of Internet neutrality.
Source: WIPO, Arbitration and Mediation Center, Nov. 24, 2020, case DRO2020-0007, NAOS c/ Bioderm Medical Center
Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.
Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.
Webinar September 10, 2020 :
