New dispute resolution procedure for ‘.fr’ domain names
Legal updates: case law analysis and intelligence
On July 22 2008 the AFNIC, the French domain name registry, implemented a new online dispute resolution procedure dedicated to ‘obvious’ infringements.
The purpose of this new procedure is to facilitate challenges to ‘.fr’ domain names that obviously infringe IP rights.
Under the new procedure, an application may be made to the AFNIC where a domain name:
- is identical or quasi-identical to a trademark;
- reproduces the name of an individual; or
- reproduces the name of a French public institution, public service or city.
Although this point is not settled yet, it might be possible to file an application under the new procedure based on the infringement of IP rights other than trademarks, such as trade names and copyrights, even though such rights were not expressly mentioned by the AFNIC.
The new procedure implements a decree of February 6 2007 on domain name management. The decree does not apply only to domain names that are identical or almost identical to trademarks. It provides that “a domain name which is identical or is likely to be confused with a name protected by an IP right cannot be adopted as a domain name”.
Therefore, the procedure should apply to all IP rights. However, IP rights owners must prove that their IP rights have been clearly infringed (ie, that the domain name adopted by a third party is identical or almost identical to their trademark or trade name).
The new dispute resolution procedure offers various advantages.
First, the application fees are relatively low (€250 per domain name) and the application procedure is simple. Rights owners may apply online by filing a form on the AFNIC’s website, and the supporting documents may be scanned and sent by email to the AFNIC.
Second, there is no hearing between the parties, and the AFNIC must render a decision within 30 days. The domain name is automatically frozen during the procedure to prevent the domain name registrant from transferring the domain name to a third party during that time. Once a procedure has been initiated, a copy of the applicant’s submission is sent to the domain name registrant by email; the latter has 15 days to reply. The AFNIC must render its decision within 15 days of the registrant’s reply or, should the registrant fail to reply, within 15 days of the expiry of the deadline. The proceedings must take place in French.
Depending on the applicant's request, the AFNIC may decide to:
- freeze the domain name at issue;
- block or delete the domain name; or
- transfer it to the applicant.
No compensatory damages may be awarded and the application fees may not be reimbursed, regardless of the outcome.
Finally, the most significant advantage is that the AFNIC now handles the whole procedure itself (ie, from the examination of the request to the enforcement of the decision). As the AFNIC is the registry for the ‘.fr’ extension, it has the authority to enforce the decision. Therefore, should the AFNIC decide to transfer the domain name to the applicant, it will implement the transfer itself and the applicant will not have to face difficulties in enforcing the decision.
The decisions must be enforced within 15 days. Since the AFNIC is not a judicial or arbitral authority, its decisions may be challenged. Therefore, the parties have 15 days to:
- initiate alternative dispute resolution proceedings; or
- institute legal proceedings before the courts.
The AFNIC’s decisions must be published on its website, but any information concerning individuals must be removed. The AFNIC’s website states that no decisions have yet been rendered under the new procedure. It will be interesting to review future decisions in order to determine:
- what the AFNIC considers to be ‘obvious’ breaches of the decree; and
- whether IP rights other than trademarks are being used as a basis for actions under the new procedure.
Cécile Cailac, Baker & McKenzie SCP, Paris
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