The emergence of domain names in the form of NFTs

Written by Dreyfus24/10/2022

NFT Non-Fungible Tokens (“NFTs”) are units of digital data (tokens) stored in the blockchain that are not inherently interchangeable with other digital (non-fungible) assets. They represent real objects such as images, videos, artworks that are bought and sold online, usually with crypto-currency.

NFTs operate as digital signatures attributable to a single owner. The underlying content represented by the NFT is given a unique identifier, making it a certified digital asset that unequivocally belongs to a specific person or entity.

An NFT is stored in the owner’s electronic wallet.

In most cases, these NFTs are backed by decentralized blockchains that are managed autonomously and automatically. The blockchain itself does not belong to anyone. Therefore, only the last owner of the NFT has the possibility to transfer it to another owner.

NFT domain names result from new web extensions linked to the blockchain via smart contracts. These extensions, such as <. eth> (“eth” referring to the Ethereum blockchain), are not recognized by ICANN at this time.

Hence, from a legal point of view, it is not easy to act against an unauthorized use of a trademark in an NFT domain name. For instance, the rules provided by the UDRP do not allow for the resolution of conflicts for this type of blockchain domain name. Thus, blockchain developers have created their own version of the Domain Name System (DNS), which fall outside of ICANN’s regulatory control.

To date, there is no international authority or court that could order the deletion or transfer of NFT domain names. This is a consequence of the decentralized nature of blockchain domain names and the anonymity of the registrants, key elements of the blockchain mechanism. The immutable nature of blockchain also forms an obstacle.

Even if these new extensions will undoubtedly bring many opportunities, the legal framework remains unsettled for the moment. New legislative evolutions on the subject of domain names and the defence of trademarks will certainly be expected in the coming years.

How did a sharp drop in Ethereum gas fees illustrate the real interest of the general public in NFTs ?

Written by Dreyfus11/08/2022

Just like the Internet at the end of the last century, NFT domain names have seemed to gain popularity among the general public as many people are considering investing in various blockchains. As a new tech tool, the fees that accompany the registration of a domain name on certain platforms can pose a major obstacle for any project to register a Web3.0 domain name. A sudden drop in Ethereum ‘Gas’ fees on the first weekend of July illustrated the public’s enthusiasm for Web 3.0.

What is the place of domain names in Web 3.0?

Transactions on blockchains are now seen as a potential solution to the middlemen of common real-world transactions, who take a commission for every money transfer. NFT marketplaces such as Opensea have recently become more popular for places to trade and sell NFT domain names.

Transactions on Web 3.0 still have a cost. In fact, miners are being paid for their role in validating transactions that circulate within the blockchain. This validation process requires solving complex mathematical problems, and the miner who solves it first is rewarded with a remuneration based on the transaction fees (called Gas fee) paid by the users responsible for the transaction. Thus, before an NFT domain name can be used, first it must be transferred to the blockchain and it is during this transfer that the transaction fee must be paid to the blockchain operator.

A long-standing problem with the Ethereum ecosystem, and its main obstacle to attracting the general public, is often attributed to extremely high transaction fees. Notably, in January 2021, Ethereum’s Gas fees jumped due to the enthusiasm around NFTs and decentralised finance. For example, between January 2021 and May 2022, the average Gas cost required by Ethereum was around $40 per transaction, with a peak of $196 recorded on May 1^st, 2022. As a result, many users had chosen to abandon Ethereum in favour of blockchains with significantly lower fees such as Solana or Avalanche.

What about the latest notable events on the Ethereum blockchain?

In the first week of July, an unexpected phenomenon was observed on the Ethereum platform: the dashboard of the Ethereum Name Service, the decentralised autonomous organisation that runs the service, showed an increase of almost 200% in .eth domain name registrations between the 2nd and 3rd of July. The following week, the ENS platform recorded more than 100,000 registrations. This astonishing increase illustrates the growing interest of the general public in Web 3.0 registrations. The ENS platform had already been gaining popularity since April, when holders of certain categories of domain names started to form clubs. One example is the formation of the 10K club for owners of ENS domains consisting of numbers between 0 and 9999. As a result, in May, a record was reached with 365,652 new Ethereum domain name registrations, and the 122,000 new registrations in June brought in some $6.6 million.

Alongside this surge in domain name registrations, the second largest sale on the ENS platform was recorded on July 3rd, for the domain name “000.eth” which sold for ETH 300 (around $320,000 at the time of sale). These events had a strong impact as they rocketed Ethereum to the top of the seven-day NFT sales chart on news tracking site Dapp Radar. In addition, social media interactions related to ENS also spiked. According to the crypto-currency social tracking platform, Lunar Crush, engagements with the keyword increased by 108.4% in seven days.

So, what is the explanation for the surge in domain name registrations on the platform?

Just like on Web2.0, owners of “.eth” domain names have to pay a fee on a regular basis, and in addition to this fee, they also pay a Gas fee. So, naturally, when the latter fall, the number of new registrations increases. Experts have claimed that the explosion in demand for ENS domain names is mainly due to the drastic drop in Gas fees seen over the weekend of July 2nd and 3rd, whose value wavered between from $1.67 to $1.97,the lowest levels in over a year.

The question then arises as to the explanation behind this sudden drop in transaction fees on the Ethereum network. The answer is mainly related to the equally large drop in daily transactions. In fact, according to Cointelegraph, daily NFT sales also reached their lowest level in over a year on Saturday. Globally, the NFT ecosystem recorded its worst performance during the month of June 2022, with an overall number of daily sales around 20,000 for an estimated value of $13.8 million.

Any events to watch for regarding the Ethereum blockchain?

The Merge is the name given to a highly anticipated event on the Ethereum blockchain. In fact, on September 19th, the Proof of Work (PoW) model will be replaced by the Proof of Stake, (PoS) which will then become the only way to verify transactions on the Ethereum protocol. The Merge will be one of the most important steps in the history of blockchain technology, because once it is operational, this new process will reduce the energy consumption of node validation operations by 99%, going against one of the main criticisms it has received for being environmentally unfriendly.

In fact, these two main consensus protocols dominate blockchains and ensure synchronisation between all nodes in the network. With Proof-of-Work, miners have to solve a complex mathematical problem requiring significant computing power in order to confirm a transaction. In contrast, Proof-of-Stake is a much less expensive consensus, requiring no energy expenditure and no special hardware. Validating a block simply involves nodes pledging a large amount of cryptocurrency. The larger the amount, the more likely a node will be chosen to update a blockchain’s registry.

Ultimately, this change in the process of validating transactions on the platform could have a significant positive effect on Gas fees. If Gas fees continue to fall, it is likely that the general public will be more inclined to develop a Web 3.0 business and register domain names on blockchains, particularly to extend the protection of various brands.

To find out more about branding processes in Web3 and the issues surrounding this mechanism click here !

The Vinci’s case: how to set up an effective domain name strategy?

Written by Dreyfus29/06/2021

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

In 2019, the US news agency Bloomberg appealed a decision of the AMF’s sanctions commission. The hearing before the court of appeal will be held this Thursday. Bloomberg was sentenced to 5 million euros for relaying information from a false Vinci press release.

A fake press release from Bloomberg

The American news agency Bloomberg is accused of having disseminated, in 2016, false information about Vinci without having verified it.

On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.

The false statement also indicates that the chief financial officer was fired. Less than a minute later, between 4:06 p.m. and 4:07 p.m., Bloomberg picked up the information and disclosed it on his terminal.

This press release had even been signed with the name of the real person in charge of Vinci’s press relations, while referring to a false cell phone number.

In defense, the defendants point out before the commission that the tone, the absence of spelling errors, the careful layout, the exact references to certain directors of Vinci or to its auditors, the mention of the real spokesperson for Vinci as well as the plausibility of the foot of the press release, which contained a link to unsubscribe from the Vinci mailing list and alerted the recipient to the automated processing of data, mentioning the contact details of the real correspondent Cnil de Vinci , did not differentiate this press release from a real press release established by Vinci.

The domain name issue in the false press release

The only inaccuracies in the false press release: the domain name of the false Vinci site to which the press release referred and the false mobile phone number of the “media contact”.

The fraudulent press release was also received by AFP, which did not follow up after realizing that this document had been posted on a mirror website, very similar to the real site but with a separate address (vinci.group and not vinci.com).

How to protect your domain name?

Domain names represent an essential intangible asset for companies since they allow access to websites related to their activity. Now, protecting the domain names associated with the trademark or the business of the company has become almost as important to the company as the protection of its brands.

In addition, domain names are the preferred medium for cyber-attacks which calls for increased vigilance on the part of owners and Internet users.

Phishing, fake president fraud, identity theft, fake job offers, theft of personal or banking data, whaling… frauds are numerous and are constantly adapting to technological progress;

Fraud is facilitated by the very protective provisions of the GDPR, which prevent the direct identification of the domain name registrant; technical service providers tend to rely upon the provisions of the GDPR and the LCEN to justify their inaction and allow fraud to continue;

There is a great risk of damage to the company’s image and reputation. Such fraud also has a significant financial impact, given the risk of embezzlement and money laundering.

The AMF’s Guide to Periodic Disclosure for Listed Companies (dated June

To protect your domain name from cybersquatters or competitors, it is recommended to also register the domain name as a trademark in addition to the reservation of the domain name.

It is possible, before making a domain name reservation and trademark registration, to check its availability, to avoid conflicts between domain names, trademarks or corporate names.

Domain names are now an integral part of the international economic landscape. Like industrial property rights and traditional distinctive signs, they are instruments of competition and intangible assets of companies. It is of course essential to have it for anyone who wants to exist in a market.

But care must be taken not to come into conflict with one’s competitors by using, even in good faith, distinctive signs close to theirs. Conversely, it is also necessary to enforce its own distinctive signs by not allowing third parties to appropriate signs close to its own in order to offer the same or similar services.

How to mitigate the risks regarding domain names ?

– Proceed to an audit of the corporate trademark and the company’s flagship trademarks among domain names, in order to map the risks;

– Set up a 7/7 watch of the corporate trademark among domain names, and a 7/7 or at least weekly watch on the company’s trademarks dedicated to goods or services;

– Set up watches on social networks such as Facebook, Instagram, Twitter and LinkedIn;

– Proceed with the preventive registration of domain names in risky extensions (such as .COM, .CO, .CM, .GROUP);

– Take preventive action(s) against potentially dangerous domain names;

– Define procedures and set up a crisis management unit to quickly react to infringements in case of emergency;

– Draft or update the company’s domain name policy (registration procedures, compliance with legal obligations, best practices) to be shared internally and with the company’s service providers and suppliers.

Cyber threats are more numerous and more complex and it has also become increasingly difficult to take action against registrants of disputed domains. More than ever, monitoring is required with the implementation of risk mapping and a defense strategy.

Dreyfus advise you in setting up the appropriate strategy to limit the risks related to domain names and to integrate industrial property assets in your compliance plans.

Domain name right : bona fide offer of goods or services

Written by Dreyfus18/06/2021

A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.

Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

Written by Dreyfus09/06/2021

La notoriété d’une marque ne suffit pas à garantir le transfert d’un nom de domaine similaire

Rémy Martin & C fait partie du groupe Rémy Cointreau, une grande entreprise de cognac. Fondée en 1724, cette maison est l’un des principaux acteurs de la production et de la fabrication du cognac en France.

Le groupe détient un large portefeuille de la notoriété d’une marque comprenant les éléments verbaux « louis » et « louis xiii » en lien avec son cognac Louis XIII le plus célèbre et le plus cher.

Suite à la détection du nom de domaine < louisthirteen.com >, E. Remy Martin & C a déposé une plainte auprès du Centre d’Arbitrage et de Médiation de l’OMPI, afin d’obtenir le transfert de ce nom de domaine.

Le nom de domaine est composé de « louis » qui est identique à la première partie de la marque et est suivi de « treize ». Un nom de domaine qui consiste en une traduction d’une marque est généralement considéré comme identique ou similaire à cette marque . « Treize » est la traduction littérale en anglais du chiffre romain « xiii », comme l’a reconnu l’expert.

Or, en examinant les différentes pages du site Internet de l’intimé, le panéliste constate que le nom est utilisé pour une véritable offre de produits en marque blanche, notamment des masques de protection contre les bactéries et les virus dans le cadre de la lutte contre le Covid-19. Bien que le Défendeur n’ait pas répondu à la plainte, des mentions légales sont présentes sur le site et une recherche rapide sur Internet des sociétés britanniques montre un enregistrement de la société Louis Thirteen Group Limited en juin 2019, soit 18 mois avant le dépôt de la plainte.

Même si la marque antérieure bénéficie d’une large protection, l’expert précise qu’il n’est pas évident que le Plaignant puisse s’opposer à l’utilisation d’un nom commercial « louis thirtheen » pour des activités aussi différentes des siennes.

La lourde charge de la preuve incombant au Plaignant pour s’opposer à l’usage de la notoriété d’une marque.

Dans l’Union européenne et au Royaume-Uni, le titulaire d’une marque notoirement connue ne peut s’opposer à l’utilisation d’une marque similaire/identique que si l’utilisation par le tiers tire indûment profit de ladite marque ou porte atteinte au caractère distinctif ou à la renommée. de cette marque.

L’expert constate que le Plaignant a manqué à sa charge de la preuve dans la mesure où il existe une possibilité réelle que le nom correspondant au nom de domaine ait été utilisé dans le cadre d’une offre de bonne foi de biens et de services antérieure à la notification du litige.

Dès lors, l’expert considère qu’il n’est pas prouvé que l’intimé n’ait aucun droit ou intérêt légitime sur le nom de domaine. Ainsi, il n’a pas à établir que le nom de domaine a été enregistré et utilisé de mauvaise foi.

La possibilité de saisir la justice reste ouverte

Pour les motifs qui précèdent, la plainte est rejetée. Cependant, l’expert déclare que cette décision n’affecte pas le droit du Plaignant d’intenter une action en contrefaçon de marque contre le Défendeur devant les tribunaux.

Une recherche rapide sur Internet aurait dû permettre au Plaignant d’identifier l’existence de Louis Thirteen Group Limited et de conclure que l’UDRP n’était pas un for approprié pour ce litige, qui devait être abordé de manière globale et non limité au seul nom de domaine. .

Par ailleurs, Louis XIII est le nom d’un roi de France et la marque antérieure n’est donc pas fantaisiste , élément que le panéliste a pu prendre en compte dans son analyse, même s’il ne l’a pas mentionné explicitement.

How to develop a reliable and flexible compliance strategy for intellectual property professionals?

Written by Dreyfus13/04/2021

With the rise of the digital age, setting up a reliable and effective compliance strategy as well as mobilizing the skills of professionals have become key factors in the company’s performance, particularly in the field of intellectual property.

From the outset, it seems important to remember that compliance includes all the processes intended to ensure that a company, its managers and its employees comply with the legal and ethical standards applicable to them.

FromLAW No. 2016-1691 of 9 December 2016 on transparency, the fight against corruption and the modernization of economic life. on anti-corruption measures to the implementation of the Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (GDPR) of April 27, 2016, and including the duty of vigilance of parent companies and ordering companies (law of March 27, 2017) or the prevention of cyber risk (implementing decree of May 25, 2018 of the NIS directive), an undeniable operational impact on companies and their managers can be observed.

Likewise, the challenges and risks of intellectual property have increased in the virtual world. Domain names as well as social networks are likely to be the targets of multiple attacks.

The key challenges of compliance with regards to intellectual property risks (I) raise questions both about the practical consequences of compliance in all aspects of intellectual property the role of the “compliance officer” in this framework (II) and the role of the “compliance officer” in this framework (III).

The challenges of intellectual property compliance

The environment as well as legal decisions revolve around the long-term development of the company and justify the establishment of real legal engineering within companies whose intellectual property is decisive. This is the key challenge of compliance, which is both a framework for thinking and a method of solving problems, involving a large number of tools and components oriented by company strategy.

Legal, regulatory and fiscal constraints are increasingly stringent and make companies bear increased responsibility in case of negligence, or even simple inaction. In particular, the regulatory framework sets out increased requirements regarding the protection of consumers and personal data.

In the field of intellectual property, domain names are key assets to contemplate when analyzing the risks and drafting compliance plans. While they are a major asset, essential to the very functioning of the business (for example, for e-mail servers, they are also risk vectors: phishing, fraud, identity theft, forged e-mail …

Online fraud can lead to loss of turnover, endangerment of consumers, and if so, risks of civil or criminal liabilities of directors for non-compliance with enforceable laws and regulations. impact the stock market price, thus causing loss of customers.

It is therefore very important to put in place the appropriate strategies to anticipate dangers, react effectively in the event of a breach and ultimately protect the company.

The practical consequences of compliance in all aspects of intellectual and digital property

Compliance has an immediate impact on all aspects of intellectual property. Also, while the legislation is more and more restrictive for companies and intellectual property professionals, compliance requirements are reinforced. How to bring your company into compliance with the laws? What are the risks of not including the Internet in your compliance plan?

Beyond its legal meaning of compliance with the requirements of laws, regulations, Codes or even directives, compliance aims to protect the company and intellectual property professionals against any non-compliance with internal and external standards and its values. Intellectual property frauds are growing and becoming increasingly complex in the digital era, which requires taking action to mitigate risks for the company business, including in terms of compliance. Its objective is to avoid adverse consequences for the company and its managers, both financial and civil or criminal liability, or damage to image and reputation. It is ultimately part of a desire for lasting growth in all aspects of intellectual property, both in France and internationally.

To cope with these new standards, companies must put in place a governance policy capable of minimizing their exposure to risk vis-à-vis their customers, their shareholders, but also regulatory authorities.

To begin with, it is essential to identify the risks through the relevant audits.

Then, it is important to assess those risks and map them. The risk management policy shall be defined accordingly.

In particular, a policy for the management of Intellectual Property related risks calls for a virtually systematic surveillance system of trademarks among domain names.

The role of the “compliance officer”

The compliance officer must protect the company from any risk of non-compliance, and therefore ensure that the organization adopts good conduct in business practice, respects the rules of ethics and finally, complies with the various laws, regulations, or even European directives. It must therefore undertake a proactive approach, organize and implement the means necessary to comply with the regulations.

Likewise, it is important to anticipate risks: once they have been defined and supervised, the mission of the compliance officer being to protect the group and its reputation, he will have to analyze the rules and standards according to the context, the activity, and the business sector.

According to a study “Who are compliance professionals?” published on March 27, 2019 and carried out by the firm Fed Legal, 92% of compliance officers have a legal background. They are operational professionals who have a strategic vision as well as a multiplicity of soft skills, in particular an ability to persuade and an interest for teaching. In addition, 60% of compliance officers belong to legal services in which there are many recruitments, both in large and small companies.

When a company is questioned, the consequences are at the same time financial, commercial and human: the company reputation will suffer greatly. The compliance officer thus takes care of protecting his company from the financial, legal and reputational risks that it incurs in the event that it does not comply with laws, regulations, conventions, or quite simply a certain code of ethics or professional conduct.

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Please feel free to contact us.

THE NECESSITY OF PROMOTING THE TRADEMARK ON WHICH THE COMPLAINT IS BASED ON

Written by Dreyfus25/11/2020

(WIPO Arbitration and Mediation Center Natixis Intertitres v. Super Privacy Service LTD c/o Dynadot / Fredrik Lindgrent Case No. D2020-1383)

Being the owner of a trademark that is identical to the disputed domain name is a real advantage in the UDRP procedure. Nevertheless, it is necessary to prove that the respondent was aware of said trademark rights, which is quite complicated when the trademark at issue hasn’t been widely advertised.

Natixis Intertitres, the subsidiary of Natixis, a French internationally known corporate company, holds the registered trademark “INTERTITRES”. This subsidiary filed a complaint before the WIPO Arbitration and Mediation Center in order to obtain the transfer of the disputed domain name <intretitres.fr> registered by a third party without authorization.

During the procedure, the identity of the registrant was disclosed, revealing a Swedish owner.

The Complainant sustained that the domain name was registered in reference to its trademark without any relation to the generic definition of the term “intertitres” especially considering that, in the French language, as in the French dictionary, the term is generally used in the singular form.

Moreover, the complainant finds the configuration of mail servers on a domain name that doesn’t refer to any website “suspicious”. Natixis Intertitres sustained that the Respondent’s intention was to take undue advantage of the Complainant and its trademark’s reputation.

The Respondent didn’t submit a formal response to the complaint but stated that he had reserved the domain name in order to create a site related to literature.

The expert in charge of this dispute acknowledges the likelihood of confusion between the trademark and the subsequent domain name, as well as the lack of proof of legitimate interest by the Respondent, who didn’t really explain the choice of this domain name.

However, the expert is not convinced by the Complainant’s arguments as regards the bad faith criterion. In this respect, he highlights two important points.

Firstly, there is no evidence that the Swedish-based registrant was aware of the trademark “INTERTITRES”. Natixis is certainly internationally known as a company, but this is not the case for its “INTERTITRES” trademark, which designates lunch vouchers mainly available in France. These vouchers are rather known under the names of “CHEQUE DE TABLE” or “APETIZ”. Therefore, it is unlikely that the Respondent was aware of this trademark.

Secondly, “INTERTITRES” is mainly a generic term. The fact that dictionary definitions are given in the singular form does not mean that the term does not exist in its plural form.

The complaint is therefore rejected.

In view of the above, it is essential for right holders to be aware of the scope of protection that their trademark can enjoy. Is the trademark sufficiently well known in the registrant’s country so that it is reasonable to assume that they had it in mind when they reserved the name? This question must be carefully considered, especially when the trademark has also an everyday language meaning and the disputed domain name is not used for an activity similar to the one for which the prior trademark is used. In this regard, the expert rightly pointed out that using a domain name primarily for having a letterbox is not prohibited (referring to the presence of e-mail servers on the disputed domain name).

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world and in their enforcement. Do not hesitate to contact us.

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.

The respondent has a licence on a trademark corresponding to a disputed domain name

Written by Dreyfus09/09/2019

WIPO, Arbitration and Mediation Centre, March 11, 2019, No. D2019-0035, Pharnext versus Wang Bo, Xiang Rong (Shanghai) Sheng Wu Ke Ji You Xian Gong Si

On numerous occasions, we have noticed that even those complainants who are represented in UDRP proceedings, could have been better informed about the nature and extent of the rights on which the respondent may rely. Detailed research is an essential prerequisite to filing a complaint, otherwise, the success of the complaint is jeopardised.

On January 7, 2019, the French company Pharnext, whose main activity is in the biopharmaceutical industry, filed a UDRP complaint seeking the transfer of the name <pharnex.com>, which had been registered by a Chinese company.

The complainant contended that it had trademark rights in PHARNEXT through ownership of its “PHARNEXT” logo protected by an international trademark since 2013 and used on its website located at www.pharnext.com.

The respondent had registered the domain name <pharnex.com> in October 2017. At the time the complaint was submitted, the disputed name connected to a website in both English and Chinese indicating that PHARNEX is a platform to help medical companies set up operations in China.

The complainant claimed that the respondent must have had the “PHARNEXT” trademark in mind when registering the domain name, because in May 2017, its partnership with Tasly, one of the most recognised pharmaceutical companies in China, had been announced. The complainant also said there is no plausible explanation for the Respondent’s registration of the Domain Name. It also claimed to have done searches which revealed no evidence that the respondent had any right or legitimate interest in the name.

However, the respondent, Xian Rong (Shanghai), firstly, proved that it had a licence on the “PHARNEXT” trademark for financial services, and secondly pointed to its active use of the trademark since December 2017. Although the ownership of a trademark does not automatically confer a legitimate interest or rights on the respondent, the complainant bears the burden of proof throughout the complaint.

In the present case, the expert was “convinced that the PHARNEXT trademark was registered in good faith”. She further noted that the domain name was used, before the filing of the complaint, in connection with a genuine offer of goods and services. Hence, though the domain name was confusingly similar to the complainant’s trademark, the complaint could not be accepted.

The expert stressed that “her findings are made in the limited boundaries of the UDRP; any matters outside the scope of the Policy may be handled by the parties in a relevant court of law.. Quite simply, the complainant had not proved that the disputed domain name had been registered and used in bad faith.

This decision once again highlights that it is essential to carry out research on all aspects of the proposed complaint; including the respondent and the sign from which the disputed domain name has been derived. For example, researching the “PHARNEX” sign on the Chinese databases would have made the complainant aware of the existence of the word mark “PHARNEX” on which the respondent relied. This would have alerted the complainant to a potential weakness in its case and enabled it to consider alternative strategies. It is essential to think of every possible defense a respondent may raise and be prepared to counter any such defense.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

The importance of registering a rectification affecting an intellectual property right

Written by Dreyfus09/02/2018

After the filing of an intellectual property right, several types of changes are likely to occur, such as the owner’s move, the change of his name in a legal way or the assignment of his rights. Such corrections must be recorded in the relevant register, as this could have very damaging consequences for the holder.

Appropriateness of registration by the rights holder

By definition, registration is an approach made with the National Register of Trademarks, Designs and Patents by means of a paper or electronically, allowing the owner to notify changes in his intellectual property rights. This is important because it enables third parties to be informed of the ownership of trademarks, patents, designs and models as well as of the operations carried out on them.

Registries are national

In France, the National Registry of Trademarks only accepts registrations of trademarks whose effects are effective in France. Registrations concerning international trademarks are also impossible except in cases where they cannot be effected at the International Office (OMPI). This is particularly the case for the license, which must be registered directly with the National Registry in accordance with its own legislation. This is because the legislation of certain states such as Germany, Australia or New Zealand does not provide for the registration of trademark licenses, thus rendering their registration in the international register ineffective.

Changes affecting ownership or enjoyment of the trademark

According to Article L. 714-7 of the Intellectual Property Code, “any transmission or modification of the rights attached to a trademark must be registered in the National Register of Trademarks in order to be effective against third parties”. This article shows that if the assignee fails to register its assignment or trademark license, the assignee may not oppose these acts against third parties. On the one hand, this will prevent him/her from taking opposition action against a subsequent filing or in the context of a legal action and on the other hand, he/she may be held liable in the event of a mistake committed by the beneficiary of a trademark license, as stated in a judgment handed down by the European Court of Justice on 4 February 2016.

On the other hand, other more rare deeds such as mortgages, pledges or guarantees also deserve to be registered with the Registry, otherwise these deeds will not be enforceable against third parties.

Thus, licenses and assignments are not the only amendments requiring registration by the rights holder. The latter may indeed be affected by other operations although they are not expressly covered by Article L. 714-7 of the Intellectual Property Code.

These transactions include the following:

–Total or partial withdrawal of trademark rights: where the trademark has not been registered, it is possible to withdraw or specify some goods and/or services, or to withdraw the entire trademark. You may find yourself in this situation if the proprietor of an earlier trademark believes, for example, that this new application infringes his rights and requires the withdrawal of certain goods or services or, more significantly, the withdrawal of the trademark.

–The total or partial renunciation of the trademark: even if it is less common, these are cases in which modifications are requested after the registration of your trademark.

From a practical point of view, the right holder must also register in the Trademark Register:

–The change of address explained by the fact that if the INPI is not informed and the owner of the rights is not represented by an agent, he may never receive a reminder letter to renew his trademarks.

–The change of legal form (a SAS becomes an SA for example) because if the INPI is not informed of this change, it will refuse the renewal of the trademarks with the new data without justification.

–The change of name as illustrated by the harsh decision of the European Court of Justice of September 8th, 2016 confirming that the holder must register his change of name in order to avoid being deprived of his rights.

Limits of registration by the owner of the trademark right

The corrections that the holder may enter are limited, and are limited to the possibility of limiting the protection of his rights. Therefore, it is impossible to modify your sign, name or logo, nor is it possible to extend the protection of your right by adding products and/or services through registration.

Registration: the solution against the loss of rights

Failure to register the above-mentioned changes can have very damaging consequences such as forfeiture of rights. Moreover, the positions adopted by the courts continue to be increasingly rigorous, prompting companies to systematically register events affecting all intellectual property rights or their holders in order to avoid all types of damage.

Registering changes affecting your intellectual property rights is an essential step in terms of protection. Dreyfus & Associés has experts in trademark law, as well as in national, European and international trademark registrations. Dreyfus & Associés is the ideal partner to support you in this process of securing and updating your intellectual property rights.

Noms de domaine