With the recent cyber spying scandals, Internet governance and the Internet Corporation for Assigned Names and Numbers’ (ICANN) role have been much debated.
In February 2014, ICANN’s President and CEO, Fadi Chehadé, presented the idea of creating a parallel international structure similar to ICANN which would have a non-governmental organization (NGO) status. It was during a trip to France that Fadi Chehadé emphasized the need for ICANN to have an international structure in order to become more open and accepted around the world.
The choice of location in Geneva as a base for this new international structure would award it a more neutral setting and escaping US-centric governance. This would also participate in enhancing ICANN’s global legitimacy.
A new structure in Geneva would bring closer ICANN and the International Telecommunication Union (IUT). For some, IUT would compete with ICANN, therefore creating rivalry. However, IUT’s General Secretary, Hamadoun Touré, stated the Union doesn’t aspire to global Internet governance.
Following Fadi Chehadé’s announcement, on March 14, 2014, ICANN announced its transition from an American governance to a more globalized one. This seems to comfort the idea that ICANN is moving towards becoming a NGO.
ICANN wishes to engage a dialogue between Board members and the Community on this topic, particularly during its meetings.
Dreyfus will be attending the next ICANN meeting in London at the end of June 2014 in order to keep you closely informed of the coming changes.
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.
June 2014 – During the ICANN50 in London, a surprising statement was made. It was announced that released domain names from the Name Collision list would not be subject to a Sunrise period, therefore depriving trademark owners from the possibility to defend their rights.
A name collision occurs when users unknowingly access a name that has been delegated in the public domain name when the user’s intent was to access a resource identified by the same name in a private network such as an intranet. It creates a risk of mass confusion for users and machines, hence their registration is prohibited.
Collision list names should not be confused with Reserved Names, which are an imposed list of names to be excluded from new gTLD registrations. “These reserved names include strings that are for Country Code Top Level Domains (ccTLDs), ICANN-related names (such as ICANN), IANA-related names (such as example), and names that the registry operator can use in connection with the operation of the TLD” says ICANN. The rules regarding these names’ release have already been discussed and ratified. Indeed, they are subject to Sunrise only if it is still running, otherwise the only remedy will be a claims notice.
The absence of sunrise period can be seen as a loophole to the rights protection mechanisms (RPM), which enable trademark holders to protect their rights during the new gTLD program. Sunrise provides for trademark holders a possibility to preregister names that are the same or similar to their trademarks in order to avoid cybersquatting. This special period takes place prior to the general launch and the IPR owner must be able to prove their prior right to the name to register the TLD.
As a defense to the lack of RPM without the Sunrise period, it was contended that the URS procedure is an adequate protection. However, many practitioners claim that these actions aren’t as efficient to protect IPRs as Sunrise periods, thus explaining the low number of IPR owners resorting to URS procedures.
Because many consider URS actions not to be sufficient, protests can be expected regarding ICANN’s decision not to submit released collision list names to Sunrise, however the outcome remains uncertain.
Dreyfus attends ICANN meetings in order to keep you closely informed of the coming changes.
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.
On May 28, 2014, the Court of Appeal of Lyon found that the title “Val Thorens” is protected by copyright. Consequently, the registration and use of the domain names <val-thorens.net> and <val-thorens.org> amount to infringement.
M.V registered the domain names <val-thorens.net> and <val-thorens.org> in 1998 and 2000 respectively. He is a consultant in information technology, web hosting and the management of advertising spaces. Regarding the Tourism Board of Val Thorens, it registered the trademark “Val Thorens” in 2004.
The Court of Appeal firstly reiterated that “in the absence of any claims from the author(s), the use of a work by a legal person in its own name leads to the presumption, as far as third parties accused of infringement are concerned, that this person holds intangible property rights over the work, whether such work is collective or not.” As such, the Tourism Board has locus standi.
The term “Val Thorens” in this case relates to a title of works, brochures and websites, the originality of which is not at issue. According to the Court, the title is the result of a “creative process, bearing the mark of the author’s personality.” It is linked to toponyms, such as the valley of the Thorens stream, leading to the creation of a new term that refers to these works in a “specific, original and recognizable” way. Thus, the Court held that “Val Thorens” is protected by copyright.
While the Board adduces evidence that the website <val-thorens.com> has been used since April 1997, M.V does not provide any evidence showing that he registered or used the domain name <val-thorens.org> before 2000.
Finally, the Board uses the trademark Val Thorens for holiday accommodation services. According to the Court, M.V’s placing of real estate advertisements on the websites <val-thorens.org> and <val-thorens.net> constituted trademark infringement. Indeed, there is a risk of confusion in the mind of the consumer owing to the similarity of the services and products.
Reliance on the decision by the Court of Appeal of Lyon should be tempered. Indeed, case law on the protection of titles of works is strict and unpredictable. The courts carry out a strict assessment of a title’s originality (Court of Appeal of Paris, September 6, 2013, “Les amoureux de la Bastille”; CA Paris, group 5, chamber 2, June 19, 2009, “L’empreinte de l’ange”). This is why it is difficult to consider this decision as creating a precedent. In light of the unpredictable nature of case law in relation to copyright matters, the best option would be to rely on trademark law and therefore to register one’s trademark.
On May 25, 2014, the American National Arbitration Forum (NAF) delivered its 44th URS (Uniform Rapid Suspension) decision, the first in respect of a domain name bearing the .sexy TLD.
The domain name concerned, <finn.sexy> is reserved by North Sound Names. Spearheaded by Frank Schilling, also the founder of Uniregistry, which, to date, is a registry comprising of 50 new gTLDs, North Sound Names is used to store domain names in the TLDs managed by Uniregistry before they are made available to the public. It is in this context that the disputed domain name was reserved on April 15, 2014.
The domain name resolves to a parking page offering the name for sale and containing links called “First Names”, “Selfies”, “Diet”, “Fitness”, “Social Networks”, “Dating” and “Modeling.” It is to be noted that these terms are clearly detached from the business activities of the complainant, Finn.no, the largest online market in Finland.
In support of its complaint, the complainant mentions its extensive use of the Norwegian trademark FINN. This allows the expert to find that the first condition of the URS procedure has been satisfied as the domain name is identical to the trademark. With regard to the legitimate interests or the rights of the registrant, the expert notes that the latter employs the term “finn” in its common usage, i.e. referring to Finnish people. According to the expert, the registrant in fact has a legitimate interest to use this name. On the issue of bad faith, neither the fact of the domain name in dispute being offered for sale nor the notification received by the registrant from the Trademark Clearinghouse (TMCH) convinced the expert. Logically thus, the complaint was dismissed.
The URS procedure is still at an early stage and it is difficult to foresee how the case law of the centres will develop. Yet, there have been many dismissals since most proceedings are primarily concerned with clear cases of trademark abuse. A more appropriate option therefore would have been to proceed on the grounds of the UDRP (Uniform Dispute Resolution Policy). Indeed, while the rules are similar, UDRP experts espouse a more flexible approach and it is usually easier to lend credence to one’s complaint. Without entertaining any preconceived opinions about the experts’ views, it seems that a transfer unto the applicant would have been warranted.
Dreyfus specializes in domain name dispute resolution and guides you in the defense of your rights on the Internet. Please do not hesitate to contact us for any queries.
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.
In March 2014, the French Parliament adopted the Hamon Consumer law (Act N˚ 2014-344 of March 17, 2014) creating the first class action procedure in France.
This class action procedure will enable customers to rally and sue for customer protection and antitrust claims. For the time being, consumer associations are the sole representatives allowed to defend consumer rights in court. These associations, submitted to ministerial approval, can be mandated by several consumers for their defense. This civil action is limited to the recovery of pecuniary damages for injuries allegedly caused by a same breach of contract, statutory duty or anti-competitive practices by the same defendant.
For a long time, class actions were denied as it was considered one can only defend one’s own interests in court. But this time, consumer protection prevailed and after examination by the Constitutional Council, the bill was adopted.
Such group actions have a larger impact than individual actions and should favor citizens’ rights. Currently, this action is very unfavorable to the defendant. The adoption of this new procedure can be seen as a response to the recent scandals involving consumers’ injuries. But even when they are not found guilty, the companies will suffer from the media attention.
This new procedure will take effect after the publication of the implementation decree. In 30 months, a report is scheduled to assess the procedure. Now that the door has been opened, the government expressed its wish to extend class action procedures to environmental and health claims.
This Consumer law also includes measures related to online consumer protection. For more information regarding these measures, you can read the article “E-commerce: Amendments to 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.
Last week, it was time for .TOKYO Sunrise to see an end. This is neither the first new gTLD for a city nor the last. After the .BERLIN in March, the .LONDON and the .NYC whose Sunrise period will end newt week, we will welcome the .HAMBURG and also the much awaited .PARIS.
For some of these TLDs, a local presence will be mandatory. If you have business in one of these cities, think about registering your names !
We remind you that a Trademark registered in the Trademark Clearinghouse along with the corresponding SMD file is required to register a domain name during a Sunrise period.
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Written by Nathalie Dreyfus10/07/2014 
With the recent cyber spying scandals, Internet governance and the Internet Corporation for Assigned Names and Numbers’ (ICANN) role have been much debated.
