French Supreme Court tackles domain name issues

The commercial, economic and financial Chamber of the French Court of Cassation, the highest court in the French judiciary, has rendered two decisions relating to domain names.

French case law already provides a comprehensive framework for the use of domain names. For instance, on November 14 2006 the court found that the registrant of a domain name could infringe the trademark rights of a competitor by operating a website selling competing products and using a domain name reminiscent of that competitor's trademark rights (MAXI Case).

In its decision of January 23 2007 the court ruled that there was no act of unfair competition in the registration of the domain name 'argus.fr' as the term 'argus' had acquired a generic nature in the public's mind. The complainant, a company that had rights in the mark L'ARGUS DE L'AUTOMOBILE ET DES LOCOMOTIONS since 1942, was therefore unsuccessful on all counts. The court nonetheless noted that the registrant of 'argus.fr' used the domain name for non-competing activities, meaning that the court may have held otherwise if the activities had been competing.

On February 20 2007 the court again ruled in favour of the registrant in a decision relating to 'decathlon.pl', a polish domain name. The website associated with the disputed domain name was displaying comic strips of a pornographic nature mocking the decathlon sporting event. The French company Decathlon, a reseller of sporting goods, felt that this use infringed its rights in the trademark DECATHLON and so decided to file a complaint before its national courts, rather than using the arbitration procedure for the recovery of domain names adopted by Nask, the Polish domain name registry. The court, however, ruled that ownership of a trademark, even a well-known one, could not prevent third parties from using the term in the sense of its usual meaning. The court nonetheless noted that the Court of Appeal did not answer the complainant's claim regarding the use by the registrant of certain colours reminiscent of the complainant's figurative trademark. The case will now be sent back to the Court of Appeal for a decision on this particular point.

David Taylor and Charles Simon, Lovells LLP, Paris