On 29 October 2010, the Paris Court of First Instance ruled in favour of France's national railway operator (the SNCF) in a case involving the registration of a domain name infringing its trade mark in the term SNCF. Given the factual background, there is little doubt that the SNCF could have obtained the transfer of the domain name in question through the Uniform Domain Name Dispute Resolution Policy (UDRP), but if so it would not have obtained any monetary compensation. Given the damages awarded in this case, the court decision will send a very strong message to cybersquatters targeting the SNCF, its trade marks and domain names.
SNCF (the Claimant) is the acronym for Société Nationale des Chemins de fer français, France's national state-owned railway company. It operates the country's national rail services, including the TGV, France's high-speed rail network. The Claimant owns a substantial portfolio of trade marks in the term SNCF and TGV as well as many domain name registrations reflecting its SNCF trade marks, including the domain name
Mr Benoît M. (the Defendant), a former trainee of RailEurope (a US subsidiary of SNCF), registered two domain names after the termination of his training contract,
On 8 January 2010, the Claimant sent an email to the Defendant asserting its rights with a view to resolving the matter amicably. In response to the Claimant's approach, the Defendant stated that he would not transfer the domain names unless the SNCF offered to buy them. On 18 January the Defendant terminated its registration of the domain name
Given the Defendant's refusal to cooperate, the SNCF filed a law suit against Mr. Benoît M. on 10 June 2010 asking for the transfer of the Domain Name as well as compensation for infringement of its well-known trade mark, the copying of its domain name
In his defence, Mr Benoît M. alleged that he was not making any commercial use of the SNCF trade mark and that he had merely registered the Domain Name because he was a train enthusiast. In addition the Defendant contended that in any event the mere registration of the Domain Name was insufficient to constitute trade mark infringement.
The Paris Court of First Instance accepted the Claimant's contention that the SNCF trade mark was well-known. According to article L. 713-5 of the French Intellectual Property Code, the mere registration of a domain name reproducing a well-known trade mark could be sufficient to trigger the registrant’s liability. Thus, in the present instance, it was immaterial whether the Domain Name had been used or not. Evidently, the fact that the Domain Name had been used at some point in time in relation to goods and services similar to those covered by the SNCF trade mark registrations did not do anything to help the Defendant's case.
In addition, the Paris Court of First Instance considered that the Defendant was also liable in tort for having registered and used the Domain Name as it copied the domain name
The Paris Court of First Instance did not consider that the Defendant was in breach of the confidentiality clause of his training contract as there was no evidence that the Domain Name had been registered as a result of the disclosure of confidential information to the Defendant by the Claimant.
Finally, the Court considered that the Defendant's registration and use of the Domain Name to offer discounted travel deals constituted misleading commercial practice for the purpose of French law, despite the fact that such use was occasional. Indeed the Domain Name and the associated website were such that it could have led a reasonable user to believe that the Domain Name and the website were owned, endorsed by or otherwise linked to the Claimant.
Thus the Court ruled in favour of the Claimant, ordering the transfer of the Domain Name and fining the Defendant €10,000 for trade mark infringement, €5,000 for violation of the Claimant's rights in the domain name
Domain name court disputes are still relatively rare in France, given the availability of other courses of action which tend to be faster and cheaper, such as the UDRP or national equivalents for .FR domain names (the PARL and the PREDEC). However, the only two remedies available under the UDRP are either a transfer or a cancellation of the disputed domain name, which for some brand owners is insufficient compensation for the damage arising as a result of an act of cybersquatting, as was the case here.
In terms of brand protection strategy there is also little doubt that the prospect of court action is a more powerful deterrent than a UDRP decision. The Defendant in the present case is now in the position of having to find €25,000, a significant sum which will certainly make him and others think twice about such behaviour.