A domain name
is defined as the user-friendly address of a web site, which is used to find an IP address (a numeric address composed of numbers and dots).
The domain name is a hierarchical set:
subdomain – body – extension
↓ ↓ ↓
3rd level 2nd level Top Level Domain (TLD) 1st level
There are two types of TLD:
- Generic domain (gTLD)
- Country code (ccTLD)
The ccTLD are two letter codes of the names of countries as they are defined by ISO (the International Organization for Standardization). They are subject to Guiding Principles. WIPO has published a text concerning the recommended practices relating to ccTLD, the objective being the prevention and settlement of Intellectual Property disputes.
It is the 2nd level which is involved when there are conflicts between the domain name and the trademark.
The legal nature
of the domain name is varied. In the commercial sense
, it is an intangible element of business. It is a distinctive sign that can attract clients. It is not a trademark as the domain name isn’t linked to specific products and/or services. In reality, a domain name is more like a shop sign than a trademark. In a non- commercial sense
, a domain name is a personality attribute.
Unlike a trademark, a domain name is not subject to the specialty requirement. When reserving it, no usage or intention of usage is required. However, in case of dispute, proof of usage of the domain name must be demonstrated.
A domain name may, according to article L711-4 of the Intellectual Property Code
, constitute an anteriority which can be used against a subsequent trademark. It must be determined whether, between the domain name and the subsequent trademark, there are not competitive conditions which could deceive the consumer.
• the domain name must in actual operation,
• specialty principle: the products or services offered in the content of the site must be compared to those designated in the registration of the trademark.
The domain name is reserved
at a locally competent registry office: AFNIC (France), EURID (Europe), etc…
The reservation of a domain name follows the rule of "first come, first served
There are no legal limits as to the choice of a domain name, but it must be valid. Domain names aren’t subject to the obligation of distinctive character as are trademarks. Nonetheless, a non-exhaustive list of fundamentally prohibited terms exists. Also, according to the geographical area selected, certain countries require a local presence for domain name owners.
Moreover, the domain name must be available. No domain name which infringes upon an earlier registered trademark or a well-known trademark within the meaning of Article 6b of the Paris Convention, to an earlier domain name, to a company name or a commercial name known throughout the whole of the territory corresponding to the selected geographical extension, to a PDO, a patronymic name, etc.… It is therefore advised to conduct prior searches as with trademarks. These searches must be based on the geographic scope selected for the domain name: generic or national extension.
In the case of conflict,
the Directing Principles govern the uniform rules of litigation of domain names and their rules of application. These principles apply, with few exceptions, to a generic domain (gTLD) and to all national domains (ccTLD).
These procedures usually take place as an economic and rapid (a few months) alternative to a legal procedure. The applicant must comply with the procedure chosen by the defendant. The entire procedure (except for the legal procedure) takes place online: filing of the complaint, notification to the respondent, response by the respondent, appointment of the panel, and the decision.
As of 31 July 2015, a new version of the Application rules
and the Additional rules
of the Uniform Domain Name Dispute Resolution Policy (UDRP)
came into effect. The modifications concern the terms of filing a UDRP complaint, locking of the domain name by registration units through a UDRP procedure, and the terms of amicable resolution of the dispute. The competent institutions are, at the choice of the victim, the courts, the WIPO Arbitration and Mediation Center, or, in the United States, the CPR, the eRes or the NAF.
In France, the French Network Information Centre (AFNIC) is committed to providing the most exhaustive information possible about the different possibilities of settling disputes regarding domain names ending in .fr, .gouv.fr, .tf, .yt, .pm, .wf and .re. Aside from the possibility of appearing in court, the implementation of an alternative procedure for resolving disputes (PARL)
, in WIPO, via its Arbitration and Mediation Center, or the Center for Mediation and Arbitration of Paris (CMAP) are possible. In 2011, AFNIC also set up an adversary dispute settlement procedure enabling any person (natural or legal) to recover a domain name or to obtain the suppression of one (called the SYRELI procedure).
At the European level, EURid offers another alternative conflict resolution procedure, the ADR (Alternative Dispute Resolution Policy)
for the .eu domain name. The ADR solution is handled by the Czech Arbitration Court (CAC), an independent body based in Prague. The Arbitration Court ensures the successful conduct of the ADR procedure, according to ADR rules.
Several types of decisions
- rejection of the complaint,
- transfer of the registration of the domain name to the plaintiff,
- revocation of the domain name.
No monetary compensation or sanction is prescribed.
Recourse to the Courts is possible prior to, during, or even after closure of the administrative procedure; in the latter case, it takes the form of an appeal.
The complaint must respond to these substantive
- The claimant must have valid rights on a trademark identical or similar to the contested domain name, or be the owner of a patronymic name or of a well-known pseudonym. He may file a complaint against these domain names, but not all the domain names. The risk of confusion is the same as with a trademark.
- The defendant must not be able to claim any legitimate right or interest on the domain name which he has registered; in other words, he must not be able to invoke his good faith resulting from a right to the name or a commercial and legitimate use, etc.
- Finally, the registration in bad faith and the use in bad faith of the domain name must be demonstrated.
Conflicts between domain names and distinctive signs thus concern trademarks, International Non-proprietary Names (INN), names and acronyms of international intergovernmental organisations, names of persons, geographical indications, country or place names, as well as commercial names.