First cybersquatting case is resolved under new '.fr' regime
In Euro-Information v Skiwebcenter, a World Intellectual Property Organization (WIPO) panellist has issued the first decision under new dispute resolution rules introduced earlier this year.
The new dispute resolution procedure was introduced following a relaxation in the rules for registering domain names in the top-level country-code domains (ccTLD) '.fr' (France) and '.re' (Reunion) (see AFNIC creates priority registration period for trademark applicants). Registrants no longer have to comply with stringent rules requiring a local presence or trademark rights in order to register a '.fr' or '.re' domain name. While this has resulted in a significant increase in the number of names being registered, it has also made it much easier for cybersquatters to register domain names.
In response, the French domain name registry Association Française pour le Nommage Internet en Coopération adopted an alternative dispute resolution procedure - the Procédure Alternative de Règlement des Litiges (PARL). Two different bodies have been appointed to resolve disputes: the Centre de Médiation et d'Arbitrage de Paris (CMAP) is authorized to issue non-binding 'online recommendations', while WIPO is responsible for issuing binding 'technical decisions'.
The PARL Rules for technical decisions are similar to the Uniform Domain Name Dispute Resolution Policy (UDRP), although the timescales are slightly different and the scope is considerably wider under the PARL Rules. Under the UDRP procedure, a complainant must prove that the domain name in question is identical or confusingly similar to a trademark or service mark in which it has rights. Under the PARL Rules for technical decisions, infringement of any third-party right protected in France may serve as proof. In addition, the UDRP procedure requires complainants to prove that the domain name has been registered and is being used in bad faith, but the PARL Rules do not specifically mention this.
The case in question was brought by a French company, Euro-Information, and involved the registration of the domain name 'cybermut.fr' by Skiwebcenter, another French company. The WIPO panellist, William Lobelson, ordered the domain name to be transferred to Euro-Information based on:
- its trademark rights in the name CYBERMUT, which Lobelson found Skiwebcenter must have known about beforehand;
- Skiwebcenter's lack of rights in the name; and
- Skiwebcenter's bad faith - demonstrated by, among other things, its intent to profit from Euro-Information's goodwill.
In this regard it will be interesting to see how the application of the PARL Rules develops, and whether, despite their wider scope, panellists will continue to insist on the requirement of bad faith, consistent with the UDRP procedure.
David Taylor, Lovells, Paris
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