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The Uniform Dispute Resolution Policy (UDRP) is a rights protection mechanism which allows the transfer or cancellation of domain names infringing trademark rights in cybersquatting cases. Currently, five centres are qualified to entertain UDRP complaints namely the World Intellectual Property Organization (WIPO) in Geneva, the Czech Arbitration Court (CAC), the National Arbitration Forum (NAF) in the United States, as well as an Asian centre (ADNDRC) with branches in Beijing, Kuala Lumpur, Hong Kong and Seoul, and more recently, the Arab Centre (ACDR) based in Jordan.

The UDRP rules constitute a common foundation enacted by ICANN, the Internet regulatory authority, and they must be adhered to by all arbitration centres. They make reference to a set of additional rules namely the Supplemental Rules defined by the centres themselves and which govern matters not covered in the main rules. Each centre has thus adopted its own rules, which evolve from time to time.

In respect of the form, most of the centres restrict the complaint to 5,000 words, but the NAF limits it to 15 pages and the ADNDRC curbs it to 3000 words.

The Czech Arbitration Court has provided for group actions (class actions) in the case where a similar legal argument can be applied to multiple domain names reserved by the same entity. A third person who shall be responsible to file the complaint on behalf of the complainants must then be appointed. The Arab Centre has a similar consolidating mechanism by virtue of which multiple claimants can merge their actions into a sole claim.

Only NAF authorizes applicants to submit additional arguments or documents within a period of 5 days from the day the registrant has or should have responded. It is to be noted however that any amendment to the complaint is prohibited. In other centres, the Supplemental Rules have not made allowance for this possibility.

With regard to the answer, it must in all cases be made within 20 days of notification of the complaint. The UDRP Rules provide for the possibility of granting the defendant additional time upon request, but not all centres have incorporated this provision into their rules. Thence, at the NAF, the applicant must specify the period of time requested, within a maximum of 20 additional days. Similarly, the ACDR allows the registrant to request for an extension to submit a response, where it has been agreed between the parties or where there are exceptional circumstances, which must be established by said registrant. These additional time limits are not automatically granted.

The issue of Language of Proceedings also arises. All centres comply with the rule laid down by Article 11 of the UDRP Rules on this matter, namely that save for the agreement of the parties to the dispute or exceptional circumstances, the language of the proceedings is that in which the registration agreement of the contested domain name is penned down. However, the centres approach the concept of exceptional circumstances differently. Indeed, the NAF does not often acquiesce to a change in the language of the proceedings, while the ADNDRC is more likely to do so, especially when the registration agreements are in Chinese and the registrants and/or applicants speak English. As concerns WIPO, the proceedings can be administered in two languages. Moreover, it may be a good idea to resort to the ADNDRC if an Asian registrar is involved so as to facilitate the implementation of the decision.

It is worthwhile to note that in addition to traditional domain names such as .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel, upon which all centres are empowered to adjudicate on, some centres are competent to adjudicate upon UDRP and associated proceedings in relation to several other extensions. Such is the case with WIPO, which has jurisdiction for proceedings relating to 69 national extensions (ccTLDs). Incidentally, the domain name .fr was one of them until 2011 and is anticipated to revert to it in the near future. For instance, ADNDRC experts have jurisdiction over disputes in relation to domain names bearing the ccTLDs .cc, .nu, .pw, .tv and .ws, while the CAC is competent specifically for .eu names. As concerns .us, only the NAF has jurisdiction. Disputes relating to the new domain name extensions (new gTLDs) can be brought before all centres.

Dreyfus specializes in dispute resolution and can help you to choose the most appropriate center to act against cybersquatting. Please do not hesitate to contact us for any queries.

While the U.S. Congress published in February a report about the lawfulness of Bitcoin, the first electronic money still raises many questions across the world. Its quoted price, which was below $1 until 2011, had risen to more than $1,000 in the previous months and is now quoted between $200 and $400. Judicial, tax and other authorities in all countries are studying this crypto-currency to understand its modus operandi. The ultimate aim is to consider all the ins and outs before introducing appropriate legislation. There are reasons to be concerned but Bitcoin is not elusive as it may sound. Below is an overview of the currency in 4 questions.

How does Bitcoin work?
Bitcoin is a peer-to-peer electronic cash system. It relies on the principles of cryptography to validate transactions and generate currency. In short, Bitcoin is a means of payment and a decentralized currency since it does not rely on any central server. The computers of users help the system run by connecting to the network: some will generate “money”, while others will validate the transactions…

The use of cryptography means that Bitcoin transactions are entirely anonymous. Thus, a transaction between a buyer and seller is not made in the traditional way: the buyer loses Bitcoins, but the same Bitcoins are not credited to the seller. The latter will receive the same amount of Bitcoins lost by the buyer, this being the price of the transaction. There is however no flow of money between the buyer and the seller, which allows for complete anonymity.

What are the concerns raised about this system?
Anonymity is the main concern for the authorities. Money laundering, illegal sales and trafficking of all types are some of the transactions which Bitcoin seems to allow. As soon as April 2012, the FBI published a document expressing its concerns that the system may be used for illegal activities, which are most often untraceable.

For example, on Silk Road, a marketplace accessible only through the anonymity network TOR, all transactions are carried out in Bitcoins. Silk Road is mainly used for the sale of narcotic substances, fake identification documents and counterfeit products. Buying on this site is therefore risky and may even prove to be dangerous for the clients since the site also markets counterfeit medications. The only limit imposed by Silk Road is that it prohibits the sales of weapons and child pornography products.

At the instigation of the U.S Senate, Silk Road was closed down in October 2013 by the FBI before reopening some days later. The platform is still operational and trafficking is still ongoing.

What is the legal status of bitcoin?
Legally speaking, Bitcoin cannot be treated as a lawful currency. The right to issue money is a sovereign power. It is therefore only natural that as of now, no State has recognized the Bitcoin as a currency unit in its legal system.

Bitcoin is also not an electronic money, which is defined in the European Union in a 2009 Directive as: “electronically, including magnetically, stored monetary unit as represented by a claim on the issuer which is issued on receipt of funds for the purpose of making payment transactions (…) and which is accepted by a natural or legal person other than the electronic money issuer”. As Bitcoin transactions are not carried out between two persons, there is no issuer. Besides, Bitcoin is not an electronically stored monetary unit. Hence, the European Directive is not applicable.

Some see Bitcoin as a “parallel” or “anarchistic currency” while others see it as a simple unit of monetary measure. As for U.S. tax agencies, they announced on 25 March that Bitcoin will be treated as an asset rather than a currency. This will allow for the purchases and sales of Bitcoin to be subject to taxes.

Finally, is it legal?
As such, it is difficult to state that the Bitcoin is illegal. It is only the ways in which it is used that may go beyond what is legally permissible and may be characterized as a criminal offense. Whilst Silk Road was used as an example here, various sites use Bitcoin to sell goods and services which are perfectly legal.

In France, the Senate held hearings in January 2014 focussing on the opportunities offered by this technology and on the way the law could evolve to further regulate it. The status of Bitcoin is more advanced in Germany. The German government has set a 25% ceiling for income tax on Bitcoin income and has categorized it as a private currency.

Only Thailand has entirely prohibited the use of Bitcoin in its territory till date.

Established in 2009, Bitcoin is however already outdated from a technical point of view. Having been replaced by technologies that are based on lighter and more secured infrastructure, the Bitcoin is probably dying out. The next issue will be how States can react to these new exchange units.

Since the revelations in the Edward Snowden case and the discovery of the Heartbleed flaw which led to the massive theft of personal data, hackers are very much in the news. But now, web hackers are starting to target lawyers and other legal professionals who are supposed to ensure that their clients’ information is duly protected.

The “hacking” consists of a discreet exchange of illegal and/or personal information by breaking into a network. This is becoming common practice and should constitute a real threat, not only to businesses, but also to States, in the years to come. According to the head of Israeli military intelligence, hacking will soon become “the greatest evolution” in warfare techniques, greater than gunpowder or air forces. And this is a matter of great concern for legal professionals.

Indeed, more and more clients are requesting firms to adopt additional measures to monitor their networks and thus prevent the leakage of confidential or valuable information, such as trade secrets. Another major concern is the possibility for hackers to retrieve bids or tenders before these are made public.

The police have for a long time been apprehensive of the fact that law firms do not protect themselves enough against computer hackers. Yet, since 2011, the American FBI has been organising awareness sessions on computer security and industrial espionage. However, according to Mickael Stout, a consultant in computer security, “the hackers will not stop anytime soon, and it is obvious that companies will have to keep up with the latest technology to ward off all threats.”

It must be noted that this movement is in fact gaining more ground, instead of weakening. The emergence of “Hackivists” such as the Anonymous, with a political aim is to make public certain information, left a deep impression globally. It is therefore highly recommended to keep close track of developments in technology and to secure as much as possible all of the companies’ data.

Dreyfus is specialised in the protection of intellectual property online and can assist you in defining your strategiesand reinforcing the measures you plan to implement. Please contact us for further details.

Enacted in 1994, the “Toubon” Act is one of the most famous laws in France. It requires companies to translate in French their slogans, particulars or information displayed on all media meant for the public. The major exception to this rule is the right to a trademark, since trademarks in foreign language need not be translated.

The Toubon Act attracted the attention of the Office québécois de la langue française. Back in 2012, that office drafted a Charter for retailers to use the French language and launched a publicised campaign promoting the use of the French language on storefronts.

Akin to the Toubon Act, the Charter provides for a trademark exception. Yet the office opposes it. It is of the view that storefront signage are rather considered by the public to be business names rather than trademarks. According to the office, commercial signage should therefore be translated into French. There is thus a clear conflict between what the law says and the interpretation made by the Québécois office.

It is in this context that eight retailers lodged a case before the Québec Superior Court asking to rule on the interpretation of the Charter. The question posed to the Court was clear: either the sign is a recognised trademark within the meaning of the Canadian Trademarks Act and the exception should apply; or it is not and it should therefore be translated in French.

In a declaratory judgment of April 9, 2014, the judges of the Québec Superior Court opined that “a trademark forms part of a legal concept that is governed by its own rules and differs significantly from that of a trade name or business name”.

The judge therefore applied the law stricto sensu and held that trademarks displayed on storefronts needed not be translated.

It is a fact that Québec traditionally holds particular importance to the French language; however, this decision is important since it denotes that tradition must not override the law.

The Court of First Instance of the European Union has intervened on the issue concerning the proof of coexistence of marks on October 2, 2013 (TPICE T-285/12 The cartoon Network, Inc. v OHIM and another). The Court has clearly ruled that the applicant who avails himself from the coexistence of a mark should prove the absence of likelihood of confusion within the mind of relevant public.

On April 2, 2012 (R 699/2011-2), the Board of Appeal rightfully contended as regard to the Court, that the applicant has not proved the way the consumer has been confronted to the conflicting marks on the market. The elements of proof have not demonstrated any absence of confusion during the period the marks were commercialised.

The issue is hence to know how to prove the absence of likelihood of confusion between the marks. The coexistence of earlier marks on the market can in some circumstances eliminate the risk of confusion between two conflicting marks. This hypothesis requires the applicant to demonstrate the absence of likelihood of confusion between the earlier marks in the mind the relevant public provided that they are identical. However, the proof of coexistence of registrations and the use of the mark by the applicant is insufficient and not relevant for the Courts.

In short, the probability of proving the peaceful coexistence of trademarks is weak. Indeed, how to prove that confusion has not occurred during the commercialisation of the marks? The outlines of the evidence of trademarks’ coexistence still need to be defined. Therefore, it is of minimal relevance in a claim of likelihood of confusion before the OHIM. The ultimate decision in the matter is within the hand of OHIM.