DISTRIB mark owner dealt blow in 'distrib.fr' dispute

In SA Agena 3000 v SARL Distrib, the Angers Court of First Instance has refused to order the transfer of the domain name 'distrib.fr' to the plaintiff - the owner of the registered mark DISTRIB. In so doing, the court confirmed the principle that the registration of a domain name is on a first come, first served basis, provided that the registrant (i) has a legitimate right to use it, and (ii) there is no risk of confusion.

Agena 3000, a French company involved in various fields of the information technology and communications industries, owns the registered trademark DISTRIB. It brought a trademark infringement action against SARL Distrib following its registration and use of 'distrib.fr'. SARL Distrib was using the domain name to host a website offering various services, including employment information, and business and distribution advice.

The Angers Court of First Instance dismissed Agena 3000's complaint and refused to order the transfer of the disputed domain name. The court held that both parties have equal rights to 'distrib.fr'. It noted that although Agena 3000 has rights arising from its trademark, SARL Distrib also has a legitimate right to use the domain name because the term 'distrib' forms part of its company name. The court further stated that where the parties to a dispute have equal rights, domain name registration operates on a first come, first served basis even if the domain name is identical to a trademark, provided that there is no risk of confusion. There was no likelihood of confusion in this case, said the court, because the parties offer different types of services.

Marc-Roger Hirsch, Cabinet Hirsch & Associés, Paris