The World Intellectual Property Organization (WIPO) and the Association française pour le nommage Internet en coopération (AFNIC), the Registry for the .FR country code Top-Level Domain (ccTLD), recently announced the launch of a new alternative dispute resolution (ADR) procedure to resolve domain name disputes under the .FR ccTLD. This ADR procedure, which became available on 4 July 2016, is also known as the PARL EXPERT (in French PARL stands for Procédure Alternative de Résolution des Litiges, or ADR procedure).
…much broader than the Uniform Domain Name Dispute Resolution Policy (UDRP) which applies to a number of domain name extensions, including those under .COM, as the rights on which a complainant may rely to file a complaint are not limited to trade marks or service marks.
The PARL EXPERT is administered by WIPO, and the official French Regulation dealing with it entered into force on 22 March 2016. It is an alternative to the existing Syreli procedure (which stands for SYstème de REsolution de LItiges or dispute resolution system), which is another ADR procedure (or PARL) already available for .FR domain names, but administered by AFNIC instead of WIPO.
The PARL EXPERT conforms to the current French domain name legislation, as regulated by articles L. 45-2 et L. 45-6 of the Code des postes et des communications électroniques (the French Posts and Electronic Communications Code or CPCE). Similar to the Syreli procedure, under the PARL EXPERT, a complainant must first demonstrate that it has standing (intérêt à agir) to file the complaint based, inter alia, on its intellectual property rights, personality rights, trade name or domain name that is identical or confusingly similar to the disputed domain name. In addition, in order to request a transfer, a complainant must demonstrate that it fulfils the eligibility requirements to register .FR domain names. Under the current legislation, pursuant to Article L. 45-3 of the CPCE in conjunction with Article 5.1 of AFNIC’s Naming Policy, registration of .FR domain names is open to any individual or legal entity residing or having its headquarters or principal place of business: (i) within the territory of one of the Member States of the European Union; or (ii) within the territory of one of the following countries: Iceland, Liechtenstein, Norway, or Switzerland. Thus complainants who do not fulfil the eligibility requirements are only able to ask for cancellation of a domain name, as opposed to transfer.
The substantive requirements under the PARL EXPERT and the Syreli procedure are the same. Pursuant to article L. 45-2 of the CPCE, a complainant must demonstrate that the disputed domain name:
(i) is likely to disrupt public order or violate principles of morality, or infringe any rights protected by the French Constitution or by French law; or
(ii) is likely to infringe intellectual property rights or personality rights, and the domain name holder does not have a legitimate interest in the domain name and is acting in bad faith; or
(iii) is identical or similar to the name of the French Republic, of a local authority or group of local authorities, of a local or national institution or public service, and the domain name holder does not have a legitimate interest and is acting in bad faith.
Thus this provision is much broader than the Uniform Domain Name Dispute Resolution Policy (UDRP) which applies to a number of domain name extensions, including those under .COM, as the rights on which a complainant may rely to file a complaint are not limited to trade marks or service marks.
However, rather like the UDRP, pursuant to article R. 20-44-46 of the relevant Decree, a legitimate interest can be established, inter alia, where the domain name holder:
(i) uses the domain name, or an identical or similar name, in connection with an offering of goods or services, or has made demonstrable preparations to do so;
(ii) is known by an identical or similar name to the domain name, even in the absence of rights in said name; or
(iii) is making a non-commercial use of the domain name or of a similar name without any intention to deceive consumers or to impair the reputation of a name in which a right has been recognized.
Article R. 20-44-46 of the relevant Decree also provides, like the UDRP, a list of non-exhaustive circumstances that can indicate that a respondent has acted in bad faith, which include whether the domain name was acquired or registered primarily for the purpose of:
(i) selling, renting or otherwise transferring the domain name to the right holder of a name that is identical or similar to the domain name, and not to actively use it;
(ii) impairing the reputation of a right holder who has a legitimate interest or a right in the name or a similar name or that of a good or service associated with the name in the mind of consumers; or
(iii) benefiting from the reputation of the right holder who has a legitimate interest or right in the name or a similar name or that of goods or services associated with the name by causing consumer confusion.
Complaints under the PARL EXPERT must be filed in French (contrary to the UDRP, there is no possibility to make a request to change the language of the proceedings) via the website www.parl-expert.fr and are decided by an expert appointed by WIPO. Like the Syreli procedure and the UDRP, the PARL EXPERT takes approximately 2 months and the remedies that may be granted to a successful complainant are limited to the transfer or cancellation of the domain name in question.
The main differences between the PARL EXPERT and the Syreli procedure relate to costs and the composition of the panel deciding the case. The fees for filing a complaint under the PARL EXPERT before WIPO amount to EUR 1,500 (similar to the UDRP), whilst the fees for filing a complaint under the Syreli procedure amount to EUR 250 (although successful complainants will be reimbursed EUR 150, unlike under the PARL EXPERT). In addition, decisions under the PARL EXPERT are delivered by a single Expert, as opposed to three members of AFNIC for decisions under the Syreli procedure.
The new PARL EXPERT is also available for other ccTLDs managed by AFNIC corresponding to France’s overseas territories, including .RE (Reunion Island), .PM (St. Pierre and Miquelon), .TF (French Southern Territories), .WF (Wallis and Futuna Islands), and .YT (Mayotte).
Hogan Lovells regularly assists clients with the registration and recuperation of .FR domain names and other extensions administered by AFNIC. Clients who wish to know more about the PARL EXPERT should contact David Taylor or Jane Seager (one of the eight Experts appointed to make decisions under the PARL EXPERT).
First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.