In a recent decision dated March 14 2017, the Versailles Court of Appeal affirmed the October 22 2015 decision delivered by the Nanterre Court of First Instance in relation to the transfer of three domain names infringing the trademark of a collectivité territoriale (the catch-all term for French communes, departments and regions). The court of appeal reviewed three decisions delivered under SYRELI, an alternative dispute resolution (ADR) procedure, to resolve domain name disputes under the '.fr' country code extension for France, which is administered by the French Association for Cooperative Internet Naming (AFNIC).
The plaintiff, Dataxy, provided internet services and was a registrar for '.fr' domain names. The defendant was the French department of Saone-et-Loire. The defendant was the holder of the trademark SAÔNE-ET-LOIRE LE DEPARTEMENT, filed and registered on April 4 2011 in connection with goods and services in Classes 35, 38, 39 and 41 – mainly online advertising services and telecommunications. The disputed domain names were 'saoneetloire.fr' and 'saone-et-loire.fr', registered by the plaintiff on June 7 2004, and 'saône-et-loire.fr', registered by the plaintiff on June 22 2012.
In August 2012 the defendant filed three complaints against the plaintiff under the SYRELI procedure, which were administered by AFNIC. In three separate decisions dated October 31 2012, the AFNIC panel denied the transfer of the domain names 'saoneetloire.fr' and 'saone-et-loire.fr',(1) but ordered the transfer of the domain name 'saône-et-loire.fr' to the defendant,(2) in accordance with Article L-45-2 of the Posts and Electronic Communications Code.
On December 4 2012 the plaintiff initiated court proceedings against the defendant and AFNIC, seeking to revoke AFNIC's decision ordering the transfer of the domain name 'saône-et-loire.fr' to the defendant. The defendant responded by asking the court to confirm this decision and to overturn AFNIC's decisions denying the transfer of 'saoneetloire.fr' and 'saone-et-loire.fr'. The Nanterre Court of First Instance granted the defendant's request and found that all three domain names should be transferred to the defendant. The plaintiff therefore appealed the lower court's decision before the Versailles Court of Appeal.
The Versailles Court of Appeal examined the dispute based on Article L-45-2(2) of the code, which provides that a domain name registration may be revoked or cancelled if the domain name in question is likely to infringe IP or personality rights, unless the domain name holder has a legitimate interest and is acting in good faith. Further, Article L-45-2(3) of the code provides that a domain name may be revoked or cancelled if the domain name is identical or similar to the name of the French republic, a French commune, collectivité territoriale, or a local or national institution or public service, unless the domain name holder has a legitimate interest and is acting in good faith. Article R-20-44-46 of the code provides a list of non-exhaustive circumstances that may suggest the existence of a legitimate interest or bad faith (similar to those under the Uniform Domain Name Dispute Resolution Policy (UDRP)).
Concerning the disputed domain name 'sâone-et-loire.fr' (registered in 2012), the plaintiff relied on its prior registrations of the disputed domain names 'saoneetloire.fr' and 'saone-et-loire.fr' (both registered in 2004) to justify its legitimate interest and good faith. The plaintiff also argued that the defendant's trademark lacked distinctiveness, given its descriptive nature, and that there was no likelihood of confusion between the websites and services provided by both parties.
The court found that the plaintiff was not known by the name Saone-et-Loire or a similar name and was not using the domain names 'saoneetloire.fr' and 'saone-et-loire.fr' to offer services in connection with the territory covered by the French department of Saone-et-Loire, as the websites resolved to a page containing sponsored links unrelated to the French department of Saone-et-Loire (eg, links to hotel offers in other cities, such as Marrakech, Rome, Barcelona and Istanbul, and to other commercial websites) and a link to the plaintiff's website, which was also unrelated to the geographic region of Saone-et-Loire. Given this, the court of appeal found that the plaintiff was unable to rely on the disputed domain names 'saoneetloire.fr' and 'saone-et-loire.fr' to justify a legitimate interest in the domain name 'sâone-et-loire.fr'.
The court of appeal also assessed whether there was a likelihood of confusion between the domain name 'sâone-et-loire.fr' and the defendant's figurative trademark. The court found that the defendant's trademark was distinctive, as it distinguished Saone-et-Loire from other collectivités territoriales. In addition, the court found that the services provided by the plaintiff were also similar to the goods and services for which the defendant's trademark was registered (mainly online advertising) and that the presence of a disclaimer on the plaintiff's website was insufficient to avoid a likelihood of association between the plaintiff and the defendant.
The court of appeal therefore found that the disputed domain name 'saône-et-loire.fr' was likely to cause confusion in the mind of the average consumer as to the source of the services provided. The court thus affirmed the lower court's decision, thereby also upholding AFNIC's decision,(3) and found that the plaintiff had infringed the defendant's trademark.
As far as the disputed domain names 'saoneetloire.fr' and 'saone-et-loire.fr' were concerned, the court of appeal ordered them to be transferred to the defendant based on Article L-45-2(3) of the code, as the domain names were similar to the name of the defendant and the plaintiff had failed to justify a legitimate interest (given where the domain names were directed, as described above). Given the plaintiff's failure to justify a legitimate interest, it was irrelevant whether the plaintiff had registered the domain names in good faith. The court of appeal therefore revoked the two decisions delivered by AFNIC(4) and ordered the transfer of all three disputed domain names to the defendant. The plaintiff was ordered to pay €25,000 in damages.
Court proceedings are quite common in France in relation to domain names, particularly as compensation for damages is generally unavailable under French ADR proceedings (and most domain name ADR proceedings in general, including under the UDRP). Further, unlike other domain name ADR proceedings (eg, Nominet's Dispute Resolution Service for UK domain names), AFNIC has not put an internal appeal mechanism in place to review its decisions; thus, court proceedings are the only alternative for a party that wishes to challenge an adverse decision. Finally, this decision also highlights how the notions of legitimate interest and good faith present in the UDRP are now relevant for the resolution of '.fr' domain name disputes in French courts under French law, and it will be interesting to see how French case law will develop in this area.
For further information on this topic please contact Jane Seager or Soraya Camayd at Hogan Lovells by telephone (+33 1 53 67 47 47) or email ([email protected] or [email protected]). The Hogan Lovells International LLP website can be accessed at www.hoganlovells.com.