Domain name transfer denied in debatable decision
Legal updates: case law analysis and intelligence
In Ville de Paris v Paris.TV LLC (Case DTV2009-0010, February 17 2010), the City of Paris has once again failed to recuperate a domain name incorporating the term 'Paris'.
The City of Paris is the public body in charge of representing and meeting the needs of the citizens of the capital city of France. One of its duties is the promotion of Paris through its website 'paris.fr', where it has set up a web TV channel showing various videos about Paris.
The City of Paris had known about the registration of 'paris.tv' for several years and had originally tried to recuperate it from a previous registrant via cease and desist letters, without success. The City of Paris then noted that the domain name had been transferred to an entity known as Paris.TV LLC, a company incorporated for the development of specific multimedia channels. Paris.TV also owns other generic and descriptive '.tv' domain names. The City of Paris owns a trademark composed of the term 'Paris' and a logo.
Considering that the domain name 'paris.tv' was infringing its trademark rights and creating confusion in the mind of internet users, the City of Paris filed a complaint before the World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP). The City of Paris contended that Paris.TV had registered the domain name in bad faith for pecuniary gain, without regard to the disruption of its business.
To obtain the transfer of a domain name under the UDRP, a complainant needs to prove all of the three following circumstances:
- The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in the domain name; and
- The domain name has been registered and is being used in bad faith.
Assessing the first limb of the UDRP, the panel considered the City of Paris's trademark and questioned the nature and extent of recognition that should be afforded to a trademark which incorporated a geographic term. The panel found that the mark was similar to the domain name, but refused to find it identical.
Citing two UDRP decisions that the City of Paris had previously filed with WIPO, the panel shared the view that a composite trademark must be considered as a whole. In the previous decisions, the panels had found that the mark could not confer an exclusive right in the geographic term 'Paris'. The panels had further underlined that the City of Paris did not have a monopoly on registered trademarks incorporating the term 'Paris' (for further details on the decision involving the domain name 'wifiparis.com', please see "Paris fails to extend its wifi reach"). In the present case, the panel decided to follow these views and further added that the use of the term 'Paris' in the mark was so closely combined with the graphic image that the word element could not be considered on its own as a distinctive or dominant element.
The panel also considered that the use made of the geographical term 'Paris' within the mark did not provide rights in the geographical term itself. It finally concluded that the use of the term 'Paris' in and of itself was not likely to lead to confusion. Therefore, the panel decided that the City of Paris had failed to meet the first requirement of the UDRP. However, for the sake of completeness, the panel went further into analyzing the two other requirements of the UDRP.
As far as the second limb of the UDRP was concerned, the panel analyzed Paris.TV's activities. It underlined that Paris.TV had an activity relating to media, but was also conducting acquisition of other '.tv' domain names. Although the panel recognized that the activity could be opportunistic, it considered that registering and holding domain names was not per se prohibited by the UDRP, and there was no element which suggested that this activity was illegitimate.
Turning to the third limb of the UDRP, the panel considered the second activity of Paris.TV, namely acquiring domain names. The panel pointed out that the word 'Paris' was in common use and was used by many towns, companies and even celebrities.
The panel added that the City of Paris did not have an exclusive right to use this term worldwide and it was not in the essence of the UDRP to privilege the first of many trademark names registered, pointing out that trademark owners should learn to share the Internet. The panel further asserted that, except for the similarity of the names, there was no element showing Paris.TV's intent to use the domain name in bad faith.
The panel underlined that the City of Paris's mark included only the term 'Paris', and not 'Paris.TV'. Therefore, the domain name could not prevent the City of Paris from reflecting its mark online. Finally, even if it recognized that some confusion may result, it was not the purpose of Paris.TV when registering the domain name, and there seemed to be no intent to interfere with the City of Paris's business. Therefore, the third requirement of the UDRP was not met and the panel denied the complaint.
Nevertheless, a dissenting opinion was given by one of the panellists, who considered that the City of Paris had a right in the term 'Paris'. The dissenting panellist underlined that the cases on which the panel was basing its decision were different from the case at stake, since the term 'Paris' was then connected to other descriptive words and was used only as a geographic reference.
However, in the present case, the panellist considered that the domain name was identical to the City of Paris's mark. Quoting the French Intellectual Property Code, the panellist stated that the domain name was creating confusion in the mind of the public with the mark and the domain name 'paris.fr'.
In addition, the likelihood of confusion was increased by the '.tv' top-level domain, since people could believe that the website referred to the City of Paris's official web TV. The dissenting panellist thus considered that the first limb of the UDRP was satisfied.
With regard to the second limb of the UDRP, the dissenting panellist found that, as the domain name was pointing to a website where Paris was not mentioned and the products or service had no relation with Paris, Paris.TV had no rights or legitimate interest in the domain name.
Finally, the dissenting panellist believed that Paris.TV registered and was using the domain name in bad faith. Unlike the panel, the dissenting panellist considered that the speculation on this domain name was in bad faith and was depriving the City of Paris. Therefore, the three limbs of the UDRP had been met and the domain name should be transferred to the City of Paris.
This decision is notable not only for the denial of the complaint, but also because of the dissenting opinion that was expressed. The dissenting panellist was a member of the panel that unanimously denied the transfer of the domain name 'wifiparis.com'. The decision provides further information as to the assessment of geographical terms and composite trademarks.
Taking the decisions for 'paris.tv' and 'wifiparis.com' together, it appears that two views can be taken when analysing the City of Paris's mark. The result of this is that the mark could be considered sufficient to satisfy the first limb of the UDRP for domain names that consist only of the term 'Paris', but insufficient for those cases where the domain name consists of 'Paris' plus a descriptive or generic term.
The decision in the present case could be criticized since the domain name can create confusion in the public's mind. It is identical to the term 'Paris' and the mere addition of '.tv' does not remove the likelihood of confusion. As the dissenting panellist noted, the addition of '.tv' is likely to increase the chances of confusion on the part of internet users who will expect to see an online TV channel relating to Paris.
Furthermore, the majority underlined that the registration and use were not, "at least for now", made in bad faith. This leaves open the possibility for a finding of bad faith in the future should the use of the domain name change.
However, whether the City of Paris will wish to try to file another UDRP for the domain name is debatable, as it would need to convince any panel that its trademark registration is sufficient to satisfy the first limb of the UDRP.
David Taylor, Lovells LLP, Paris
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10