First decisions issued under PREDEC

Since the implementation of the PREDEC on July 22 2008, 51 cases have been filed with AFNIC, the French domain name registry.
In July 2008 AFNIC implemented the PREDEC, a new simplified alternative dispute resolution procedure for the recuperation of domain names in cases where such domain names blatantly breach the Decree of February 6 2007. The new procedure applies to domain names registered under the country-code top-level domains '.fr' (France) and '.re' (Reunion Island).
The PREDEC differs from the main French alternative dispute resolution policy (Procédure Alternative de Réglement des Litiges, known as the PARL), which is administered by the World Intellectual Property Organization (WIPO) and requires complainants to demonstrate that a disputed domain name infringes third-party rights in France. In contrast, cases under the PREDEC are decided by a panel consisting of the chief executive officer and four senior members of AFNIC. What is required to be proved more closely resembles the three limbs of the Uniform Domain Name Dispute Resolution Policy, at least as far as brand owners are concerned.
The PREDEC allows for the recuperation of domain names which:
  • are detrimental to the name, image or reputation of the French Republic, state institutions, public institutions or public services of the French Republic, or create confusion in the mind of the public;
  • are identical or confusingly similar to an IP right protected under national or EU law, where the owner lacks any legitimate right or interest and is not acting in good faith; or
  • are identical to the surname of an individual, where the owner lacks any legitimate right or interest and is not acting in good faith.
Once a complaint has been filed with AFNIC, the respondent has 15 days in which to reply. AFNIC then renders its decision 15 days later. AFNIC's decision will be implemented 15 days after that, unless court or PARL proceedings are filed.

Since the implementation of the PREDEC on July 22 2008, 51 cases have been filed with AFNIC. In 25 cases a transfer was ordered, while in 18 transfer was denied. In one decision AFNIC ordered the deletion of the domain name and, in another, such deletion was denied. One decision rejected the complainant's request for the domain name to be frozen. In the other five cases, the respondents voluntarily transferred the domain names to the respective complainants.  

These first decisions provide an opportunity to clarify the scope of the PREDEC and identify why some complaints have failed to achieve a transfer. In particular, consideration of these decisions allows an initial assessment of what is to be considered as blatantly abusive for the purposes of the PREDEC.

So far, transfer requests under the PREDEC have seemingly been denied for three main reasons. The main reason for a denial is the lack of evidence produced by some complainants in support of their complaints. In several cases, while the complainant overcame the first hurdle of showing that its trademark was identical to the disputed domain name, it failed to substantiate the lack of legitimate right or interest and the bad faith of the respondent (eg, Société Skalys v F (Case FR00018, November 11 2008)). In other cases, the complainant simply based its argumentation on the fact that the disputed domain name was not used at all or was used to point to a mere parking site. In both instances, AFNIC took the opportunity to clarify that such factual circumstances were insufficient to establish a lack of legitimate right or interest and/or the bad faith of the respondent.

Secondly, AFNIC has rejected complaints where a complainant did not hold any valid IP rights. Complaints based on other rights such as, for instance, a registered corporate name or a trade name, were considered insufficient to obtain transfer of a disputed domain name (eg, Société Merignac Auto v G (Case FR00041, February 19 2009)).

Finally, several complaints failed because the disputed domain name had been registered prior to the complainant's trademark. In one instance, the respondent registered a domain name which was identical to the domain name of an online business. The fact that the complainant had run a large commercial campaign to prepare for the launch of its activity in France six months before the domain name registration by the respondent was not considered sufficient evidence by AFNIC. Transfer was denied because the disputed domain name had been registered before a corresponding trademark by the complainant (see Société Vocalenvision v F (Case FR00033,January 6 2009)). In another denial case, an association requested the transfer of a domain name that one of its members had registered under his personal name and let the association use for free. When leaving the association, the holder refused to let the association continue to use the domain name and offered it for sale. Unfortunately, the association had registered a corresponding trademark only after the domain name was registered and its request was accordingly denied (Association C9 Radio v FM (Case FR00061, March 26 2009)).

It is crucial for complainants to prepare meticulously their complaints under the PREDEC, even though it is intended to be cheaper and swifter than filing a PARL or court proceedings. It seems that some complainants have assumed that it is sufficient to demonstrate that they have a trademark that is identical to a domain name, but this is not the case. AFNIC clearly expects parties holding a trademark and requesting transfer of a domain name under the PREDEC to provide evidence that the respondent acted in bad faith and did not have a legitimate right or interest. If this is not the case, transfer will be denied.

Complainants should thus consider carefully whether to bring a complaint under the PREDEC or the PARL, bearing in mind that the PREDEC is intended to be used only in cases where a domain name blatantly breaches the Decree of February 6 2007.
David Taylor, Lovells LLP, Paris 

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