In a December 3 2015 decision(1) the Nanterre Court of First Instance held that the domain name 'cecilederostand.fr' had been registered fraudulently and in violation of the claimant's rights in the trade name 'Cécile de Rostand' and the domain name 'cecilederostand.com', and its copyright in the virtual character Cécile de Rostand.
The claimant was Vente-privee.com, a French company set up in 2001 operating a major e-commerce platform which allowed registered members to access offers for goods and services from different companies at reduced prices and for a limited period. The claimant had created a virtual character named Cécile de Rostand to personify its online customer relation service, whose name was included in emails sent to customers. The claimant had registered the domain name 'cecilederostand.com' on January 22 2004 and this domain name was used to redirect to its main website at www.vente-privee.com.
The defendant was a private individual (whose name was hidden in the court decision for data protection reasons) and his company JKC Finance, which specialised in the provision of administrative, accounting, fiscal and financial consultancy services. On June 28 2010 the defendant applied to register the French word mark Cécile de Rostand in Classes 18, 24 and 25, and also registered the domain name 'cecilederostand.fr'.
Alerted to the defendant's trademark application and domain name registration, the claimant sent cease and desist letters on March 14 and 27 2012 to the defendant to ask for transfer of the trademark and the domain name, but to no avail. Therefore, the claimant initiated court proceedings to seek the cancellation of the trademark and the domain name, as well as damages.
The claimant relied on:
- alleged rights in the well-known unregistered trademark CECILE DE ROSTAND, the trade name Cécile de Rostand and the domain name 'cecilederostand.com'; and
- copyright in the virtual character Cécile de Rostand by claiming originality in her appearance, personality, writing style and name.
On the one hand, the court rejected the claimant's arguments regarding the alleged well-known unregistered trademark CECILE DE ROSTAND as the court found that the name Cécile de Rostand identified the claimant's company but not a particular class of goods or services, and that failure to do so meant that the term 'Cécile de Rostand' did not fulfil the primary function of a trademark (ie, as a source identifier for goods or services).
On the other hand, the court accepted that the claimant had rights in the trade name Cécile de Rostand and the domain name 'cecilederostand.com' and copyright in the virtual character Cécile de Rostand. Based on such rights, the court found that both the trademark and the domain name had been registered fraudulently and in violation of such rights. The court thus:
- cancelled the trademark;
- ordered the cancellation of the domain name; and
- awarded the claimant €5,000 in damages.
This decision is a further illustration of the fact that under French law a domain name can be protected in its own right, provided that it is actively used (including through redirection to an active website, as in the case at hand) and can trigger the cancellation of trademarks and domain names registered subsequently if there is a risk of confusion with the prior domain name. Interestingly, this decision also highlights the fact that a domain name can infringe a variety of rights – not merely trademark rights, but also rights in domain names, trade names and copyright.
For further information on this topic please contact Vincent Denoyelle at Hogan Lovells by telephone (+33 1 53 67 47 47) or email (firstname.lastname@example.org).The Hogan Lovells International LLP can be accessed at www.hoganlovells.com.
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