In a July 23 2014 decision the Lyons First-Instance Tribunal considered whether a trademark consisting of the domain name VENTE-PRIVEE.COM (the term 'vente privée' means 'private sale' in French) could be considered well known for the purposes of French law. This comes after the Paris First-Instance Tribunal issued two contradictory decisions on the same issue at the end of 2013, leaving it to the Paris Court of Appeal to resolve the conflict in a much-anticipated decision.

Facts

Claimant SA Vente-privée.com is a French company that operates a major e-commerce platform giving registered users access to offers for goods and services from many companies at significantly reduced prices. Its main website is www.vente-privee.com and it boasts 14 million registered users, making it one of the most visited e-commerce websites in France. The claimant has registered French trademarks in the terms VENTE-PRIVEE and VENTE-PRIVEE.COM. It also uses the term 'vente-privee.com' as part of its corporate name and trade name, and owns the domain names 'vente-privee.com' and 'vente-privee.fr' (both with and without the hyphen).

The defendant was a French national who had registered the domain name 'venteprivees.fr'. The defendant had been involved in a number of Uniform Domain Name Dispute Resolution Policy proceedings before the World Intellectual Property Organisation, which he lost. The domain name pointed to a pay-per-click parking page with advertising targeting the goods and services corresponding to the claimant's trademark registrations.

The claimant sent several cease and desist letters to the defendant, to no avail. The claimant then initiated proceedings before the tribunal on the grounds of trademark infringement and unfair competition. The rights which it relied on were not limited to its trademarks, but also included its corporate name and domain names. The defendant did not respond or appear before the tribunal.

Decision

The tribunal decided in favour of the claimant. The defendant's registration and use of the domain name were found to constitute both infringement of the claimant's trademarks and acts of unfair competition in violation of the claimant's corporate name, trade name and domain names. The tribunal decided that the trademark consisting of the domain name 'vente-privee.com' was well known for the purposes of French law and could thus benefit from a higher standard of protection whereby, for instance, a risk of confusion was not required for a finding of infringement. The tribunal ordered the transfer of the domain name to the claimant and the payment of fines and damages by the defendant.

Comment

The cornerstone of the case was the substantial evidence that the claimant produced to show the significant goodwill and renown of its trademarks, corporate name, domain names and business. The claimant went to great lengths to demonstrate the fame of its brand, producing numerous press articles, data on internet traffic and advertising spending, awards and so on.

The decision will make it more likely that the Paris Court of Appeal will harmonise the contradictory decisions of the Paris First-Instance Tribunal in favour of recognition of the VENTE-PRIVEE.COM trademark as a well-known trademark.

For further information on this topic please contact Vincent Denoyelle or David Taylor at Hogan Lovells by telephone (+33 1 53 67 47 47) or email (vincent.denoyelle@hoganlovells.com or david.taylordrd@hoganlovells.com).The Hogan Lovells International LLP can be accessed at www.hoganlovells.com.

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