On March 16 2015 the Paris Court of First Instance granted an injunction to a food and tea company for the immediate transfer of six domain names which had been initially registered in its name by a web designer which had then transferred them to its own name without authorisation.(1)
In February 2013 and March 2014 the claimants, Tea Adoro (a French company with a tea shop and delicatessen in Marseille) and its director, registered two French trademarks using the term 'Tea Adoro'. They also registered a Community trademark and an international trademark in the same term.
The defendant was a Dutch company specialising in distribution, product design and web design, with offices in London and Marseille.
In January 2014 the claimants signed a contract with the defendant whereby the defendant undertook, among other things, to design a website for the claimants and for that purpose obtain on the claimants' behalf six domain names using the trademark TEA ADORO under different top-level domain name extensions, such as .eu (Europe), .ch (Switzerland) and .mobi (aimed at users accessing the Internet on portable devices).
The relationship between the claimants and the defendant soured as a result of a number of contractual breaches on the defendant's part, including the transfer of the domain names into the ownership of the defendant on its own initiative and without the claimants' consent. On September 17 2014 the claimants notified the breaches to the defendant and their intention to terminate the contract as a result.
The claimants initiated summary proceedings to obtain the transfer of the domain names on the grounds of the defendant's bad faith and the resulting business disruption. The claimants also sought damages and compensation in view of the fact that they had to retain another service provider.
In response, the defendant argued that the dispute was not within the court's jurisdiction, given that the defendant was established in the Netherlands and the United Kingdom.
The court rejected the defendant's argument in terms of competent jurisdiction and highlighted that, as the dispute related to the infringement of a Community trademark on French territory, the court had exclusive jurisdiction over the dispute.
The court granted the injunction to transfer the domain names as well as an initial payment of €3,876 in damages as a result of the defendant's breach. The defendant's retention of the domain names was found to be clearly abusive and a blatant disruption of the claimants' business, justifying interim relief.
The key deciding factor for the court was a series of emails exchanged between the parties, clearly showing that the domain names were intended to be registered to the claimants and that they initially had been registered to the claimants. Another key piece of evidence was a written statement from the claimants' new web designer that the domain names were not pointing to an active website, thus depriving the claimants from a substantial source of business.
This case illustrates the possibility that a claimant may obtain the immediate transfer of domain names when it is blatantly clear that their retention is causing manifestly unlawful damage. The key for such an action to succeed is the demonstration that the retention and use of the domain name is clearly abusive and detrimental to the claimant and that urgent court intervention is necessary. Evidence of the parties' intentions regarding ownership of the domain names was pivotal in this case. In the present instance, the fact that the claimants had lost control of the domain names and associated websites was the deciding factor for the court to grant immediate interim relief.
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 (email@example.com or firstname.lastname@example.org).The Hogan Lovells International LLP can be accessed at www.hoganlovells.com.
(1) The decision (in French) is available here.
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