Eligibility requirements vital to obtain transfer of '.fr' domain name

SYRELI (SYstème de REsolution de LItiges) is the new alternative dispute resolution (ADR) procedure for ‘.fr’ domain name disputes, which is administered by the French registry, AFNIC, and has been in effect since November 21 2011. The SYRELI ADR procedure was created as the result of the adoption of new legislation regulating French domain names (Act No 2011-302 of March 22 2011), which substantially modified the rules for allocation and management of ‘.fr’ domain names, following the 2010 Constitutional Court's decision declaring the previous French domain name legal framework unconstitutional (see "Alternative dispute resolution procedure for ‘.fr’ suspended").

In a recent SYRELI decision from March 18 2013, the AFNIC panel confirmed the well-established principle that non-EU based companies seeking to recover a French domain name must either (a) request the transfer of the domain name to an affiliated company that satisfies the eligibility requirements for registration of ‘.fr’ domain names or (b) request the cancellation of the domain name.

The complainant was All Market Inc, a company based in New York, United States, which has been in the business of selling soft drinks, in particular coconut water, since 2004. The complainant had registered two Community trademarks (CTMs) for VITA COCO in 2010. The respondent was Christine B, a private individual.

The disputed domain name was ‘vitacoco.fr’, registered by the respondent on April 2 2011.

To be successful under the new SYRELI ADR, a complainant must demonstrate, first, that it has standing (intérêt à agir) to file the complaint and, second, that pursuant to Article L45-2 of the French Posts and Electronic Communications Code (CPCE), the disputed domain name:

• is likely to disrupt public order or violate principles of morality, or infringe any rights protected by the French Constitution or by French law;
• is likely to infringe IP rights or personality rights, unless the holder has a legitimate interest in the domain name and is acting in good faith; or
• 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, unless the holder has a legitimate interest and is acting in good faith,

In the present case, the AFNIC panel held that, in light of the complainant's VITA COCO CTMs, the complainant had standing to file the complaint. In addition, prior to examining the substantive requirements for obtaining the transfer or cancellation of a ‘.fr’ domain name, an AFNIC panel will examine whether a complainant meets the eligibility requirement for registration of a ‘.fr’ domain name.

In accordance with Article L45-3 of the CPCE and Article 5.1 of AFNIC's Naming Policy, registration of ‘.fr’ domain names is available to individuals or legal entities residing or having their headquarters or principal place of business either:

• within the territory of one of the member states of the European Union; or
• within the territory of one of the following countries: Iceland, Liechtenstein, Norway or Switzerland.

In the present case, the AFNIC panel observed that the complainant was a company based in the United States and thus did not meet the eligibility requirements for registration of a ‘.fr’ domain name. However, given that the complainant requested the transfer of the domain name to one of its affiliated companies based in the European Union, the AFNIC panel found that the complaint was admissible.

Turning to the substantive requirements, the complainant based its claim on the ground that the domain name was "likely to infringe intellectual property rights or personality rights", in accordance with article L45-2(2) of the CPCE, which is the relevant provision for brand owners.

The AFNIC panel examined the complainant's trademark rights and found that the domain name was almost identical to the complainant's trademark rights in the term ‘Vita Coco’. It thus held that the domain name was likely to infringe the complainant's rights.

The AFNIC panel then proceeded to examine whether the respondent had a legitimate interest in the domain name and had acted in bad faith, as defined by Article R20-44-43 of the CPCE.

Similar to the Uniform Domain Name Dispute Resolution Policy (UDRP), pursuant to Article R20-44-43 of the CPCE, a legitimate interest can be established, inter alia, where the domain name holder:

• 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;
• is known by an identical or similar name to the domain name, even in the absence of recognised rights in said name; or
• 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 respect of which a right has been recognised or established.

However, the AFNIC panel refrained from examining this point and proceeded to examine whether the respondent had acted in bad faith.

Turning to the bad-faith requirement, Article R20-44-43 of the CPCE also provides, like the UDRP, a list of non-exhaustive circumstances that can indicate that a respondent acted in bad faith, which include whether the domain name was acquired or registered primarily for the purpose of:

• 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;
• 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
• 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.

In the present case, the AFNIC panel observed that the complainant had trademark rights which clearly predated the registration of the domain name and that the evidence submitted, particularly the correspondence between the parties, showed that the respondent was aware of the complainant and its rights in the mark VITA COCO.

Therefore, given the aforementioned circumstances, the AFNIC panel ruled that the respondent had registered the domain name primarily for the purpose of benefiting from the reputation of the complainant by creating a likelihood of confusion in the mind of consumers.

Thus, the AFNIC panel decided to transfer the domain name to the complainant.

The decision is important as it highlights the need for non-EU based complainants seeking to recover a domain name to either request the transfer of the disputed domain name to one of its affiliated companies based in the European Union or to request the cancellation of the disputed domain name, particularly given that, in the past, AFNIC panels have dismissed complaints from non-EU based companies, even if they have secured trademark rights in Europe, for failure to meet the eligibility requirements for registration of a ‘.fr’ domain name.

David Taylor and Soraya Camayd, Hogan Lovells LLP, Paris