Decision leads to uncertainty over generic terms in domain names

France

The Court of Nanterre has issued its decision in Patrimoine Management et Technologies v E Manitoo, which is expected to have an impact on registration requirements for domain names - particularly those that include generic terms - in the country-code top-level domain '.fr'.

Currently, for a domain name registration to be granted, the name must incorporate either (i) a trademark held or applied for in France by the applicant, or (ii) the applicant's corporate name (in whole or in part). If there is more than one application for a domain name, registrations are granted on a first come, first served basis.

In this case, the company E Manitoo added the word 'patrimoine' to its corporate name, and then applied for and was granted the domain name 'patrimoine.fr'. The company Patrimoine Management et Technologies, which owns patrimoine.com, sued E Manitoo and invoked its prior rights in the word 'patrimoine' as a trade name.

The Court of Nanterre ordered the transfer of the disputed domain name from E Manitoo to Patrimoine Management. It held that E Manitoo had no rights to the domain name because it has no legitimate interest in the field of patrimony (ie, the commercial activity consisting of managing the goods owned by a person or a company) - its registered activities are listed as "internet and electronic commerce provider".

It is unclear whether the decision means that the link between a term for which registration is sought and an applicant's field of activity should be considered a condition for registration, especially for domain names that contain generic words. Critics of the decision have pointed out that insofar as the term 'patrimoine' is generic, the court seems to have conferred a quasi-monopoly to Patrimoine Management in relation to the term.

Gérard Bareille, Inlex Conseil, Paris

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