David Taylor July 28 2008 Intellectual Property Office Sued over Domain Name Hogan Lovells | Intellectual Property - France David Taylor Intellectual Property BackgroundFactsDecisionBackgroundLike most countries, France offers its creative citizens the opportunity to protect the fruits of their labours by registering them with the French Intellectual Property Office (Institut National de la Propriété Industrielle (INPI)), a public organization under the supervision of the Federal Ministry of Economics, Finance and Employment. The INPI offers national registration services for trademarks, designs and patents, and also provides advice and information through its website (www.inpi.fr).The INPI also provides a feature that enables creators of a work or an invention to obtain a date of record for their creation and to identify themselves as the author or the inventor thereof. Such a submission can be filed by means of a so-called 'enveloppe Soleau'. Named after its inventor, the enveloppe Soleau can be submitted to the INPI at any given moment, either in person or online on the INPI website. While the submission of an enveloppe Soleau does not in itself constitute a right, it may, in case of an invention, also function as a priority right in relation to an invention applicable in France.The enveloppe Soleau is divided into two parts and the applicant must include a description of the idea or work in question in each part. Once received by the INPI, the INPI punches the envelope and marks the names of the applicant, after which time the envelope is returned to the sender, who must keep the envelope and may open it only in case of a dispute. To facilitate use of its services, the INPI has a website at www.e-soleau.org.FactsRather than being a means of determining the dating of new creations, the domain name 'e-soleau.org' recently starred in a different role as a dispute arose over its registration. The complaint was submitted to the World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP). The Internet Corporation for Assigned Names and Numbers (ICANN) introduced the UDRP in 1999 as a remedy for simple and obvious cases of cybersquatting. The complainant was Idées & Patentes SARL, a company located in France which was in the business of providing internet services. The complainant contended that it owned a figurative E-SOLEAU trademark registered with the INPI on November 10 2004. The complainant was also the holder of several domain names, namely 'e-soleau.fr', 'e-soleau.com', 'e-soleau.net' and 'e-soleau.eu'.The respondent in this case was the INPI. The INPI alleged that it owned the well-known trademark ENVELOPPE SOLEAU, which gave it a monopoly to use the denomination 'e-soleau' and justified its registration of the domain name 'e-soleau.org'. Well-known trademarks are protected under Article 6bis of the Paris Convention for the Protection of Industrial Property in the country where the trademark acquired its reputation, regardless of whether the trademark has been registered. The INPI added that the fact that it had not opposed the alleged registration of the trademark E-SOLEAU by the complainant implied neither a renouncement of its own trademark right nor an acknowledgement of the validity of the complainant’s assumed trademark.To obtain a successful transfer of the domain name, the complainant in this case would have had to prove all three of the circumstances under Paragraph 4(a) of the UDRP, as follows: The domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainant had rights; The respondent had no rights or legitimate interests in the domain name; and The domain name was registered and was being used in bad faith.DecisionOn a preliminary point, the respondent argued that the panel did not have jurisdiction over the case because the respondent was a French public body and under French law, public entities cannot be submitted to arbitration. In this respect, the panel pointed out that, in accordance with previous UDRP decisions, the UDRP procedure was not akin to an arbitration award which required enforcement against the respondent in France and the case was not decided in France. The panel observed that the parties’ obligation to participate in the procedure was purely contractual and a result of the domain name registration agreement concluded between the respondent and the registrar. The panel therefore found that it was competent to decide the matter.The complainant first had to prove that the domain name was identical or confusingly similar to a trademark in which the complainant had rights. The complainant asserted that it was the owner of the trademark E-SOLEAU since November 10 2004, and that it had also registered several domain names including the name 'e-soleau'. The respondent argued that the complainant could not rely on its alleged trademark right as it had not submitted any documents in support of this statement. The respondent further submitted that it held rights in the well-known trademark ENVELOPPE SOLEAU.On the basis of the evidence advanced by the complainant, the panel concluded that the trademark E-SOLEAU relied on by the complainant was in fact owned by the complainant’s manager, Mr Behue. The panel therefore issued a panel order requesting the complainant to submit further documentation showing its rights in the mark. In response to the panel order, the complainant submitted an affidavit from Behue stating that the latter had assigned the exclusive use of the trademark E-SOLEAU to the complainant by means of a signed act. Under Article L714-7 of the Intellectual Property Code, any cession or modification of rights in a registered mark has effect against third parties only if it is listed in the national Trademark Register of the INPI. In this case the complainant provided no evidence of such listing. The panel noted that the complainant had submitted neither the signed act nor the registration of the contract to the Trademark Register.The panel concluded that the complainant had not established that it had rights in the mark as required by Paragraph 4(a)(i) of the UDRP. The respondent, however, had submitted ample of evidence in support of its trademark claim and had established that it had been providing the enveloppe Soleau service for almost a century. Therefore, the panel found that the respondent was likely to have a right in the designation ENVELOPPE SOLEAU.Domain names are issued on a first come, first served basis. The INPI was clearly the first to register the domain name 'e-soleau.org' and could submit proof of trademark rights where the complainant could not. The panel therefore had no difficulty in denying the complainant’s request to order the transfer of the domain name to the complainant.For further information on this topic please contact David Taylor at Lovells by telephone (+33 1 53 67 47 47) or by fax (+33 1 53 67 47 48) or by email ([email protected]).