In a January 14 2016 decision the Paris Court of First Instance ruled that the domain name 'tecnokar.fr' had been fraudulently registered, as it deliberately infringed the claimants' rights regarding their corporate name and the trademark TECNOKAR.(1) The court therefore ordered the transfer of the domain name to the claimants and awarded €2,000 in damages.
The claimants were Tecnokar Srl and its subsidiary Tecnokar Trailers Srl, both of which were Italian companies specialising in the manufacture and sale of industrial vehicles in Europe, including trailers. In addition, their French distributor Legras was required to join in the proceedings before the court. The claimants owned several trademarks regarding the term 'tecnokar', including Community Trademark 010030542 with a priority date of June 8 2011.
The defendant, Remec, was a French company that had been the claimants' exclusive distributor for the French territory pursuant to a distribution agreement signed in July 2009. Remec registered the French semi-figurative trademark TECNOKAR TRAILERS on November 21 2011. It had registered the domain name on April 30 2009 in an alleged attempt to protect the claimants' interests.
After the claimants had terminated their distribution agreement with Remec and concluded a new distribution agreement with Legras, they filed a lawsuit against Remec for, among other things, the cancellation of Remec's trademark TECNOKAR TRAILERS and the transfer of the domain name for fraudulent registration.
The pre-trial judge issued an order on November 27 2014 prohibiting any use of the term 'tecnokar' by the defendant within the European Union in relation to the goods and services designated by the Community trademark.
In spite of this, Remec continued to use the domain name in a manner that was considered to be infringing. A screen capture taken on April 2 2015 that was produced in evidence showed that the domain name led to a website containing technical specifications for a trailer associated with the term 'tecnokar trailers'.
On the merits, the court unsurprisingly ruled that the domain name had been registered and used fraudulently, and that it infringed the claimants' rights relating to their corporate name and trademarks. It therefore ordered the transfer of the domain name. In addition, the court awarded €2,000 in damages to the claimants, specifically for the illegal registration and use of the domain name.
This decision is a useful illustration that, under French law, a court can order the transfer of a domain name registered or used fraudulently (in this case, because it infringed the claimants' prior rights over its corporate name at the time of registration and also their trademarks). Further, this decision highlights that a party whose rights have been infringed can seek and obtain a specific damages award. The possibility of obtaining damages is a key aspect to consider when choosing between French court proceedings and alternative dispute resolution mechanisms such as the Uniform Domain Name Dispute Resolution Policy or the Syreli procedure (specific to '.fr' domains), as the latter do not allow for monetary compensation.
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 website can be accessed at www.hoganlovells.com.
(1) The decision in French is available at www.legalis.net/spip.php?page=jurisprudence-decision&id_article=4916.
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