New dispute resolution system for '.fr' ccTLD comes into force

France

Following a decision of the Conseil Constitutionnel (the French Constitutional Court) on October 6 2010, which resulted in the amendment of the rules relating to the attribution of '.fr' domain names, the dispute resolution systems for the French country-code top-level domain (ccTLD) had been suspended for several months, leaving cybersquatting victims relatively unarmed.

This situation is now coming to an end. In a order dated October 21 2011 and published on November 3 2011, the minister in charge of electronic communications approved the rules and regulations of a new dispute resolution system drafted by AFNIC, the '.fr' registry. This new dispute resolution system, called SYRELI ('SYstème de REsolution de LItiges'), came into force on November 21 2011 for '.fr' and '.re' (Reunion Island) domain names, and will be extended to the other domain names handled by AFNIC ('.tf' for the French Southern and Antarctic Lands, '.wf' for Wallis and Futuna, '.pm' for Saint Pierre and Miquelon and '.yt' for Mayotte) on December 6 2011.

The new dispute resolution system replaces both the PARL and the PREDEC and will become the only applicable procedure for the French ccTLD. This important amendment is the last change in a complete redrafting of the rules governing the management of domain name disputes, which started with the October 6 2010 decision of the Constitutional Court (2010-45 QPC).

In this decision, the court declared that Article L45 of the French Postal and Electronic Communications Code (the legal framework for the '.fr' ccTLD since 2004) was unconstitutional. The court considered that the existing system protected IP rights effectively, but did not sufficiently protect the freedom of trade and the freedom communication, which are guaranteed by the French Declaration of Human Rights of 1789. As Article L45 was the basis of the attribution and management of the '.fr' ccTLD, the whole system had to be rethought. The court took the precaution of postponing the effects of its decision until July 1 2011 so that the legislature could define new rules for the granting, renewal, refusal and withdrawal of '.fr' domain names (for further details on the decision, please see "Rules applicable to '.fr' domain names found to be unconstitutional").

The legislature amended the rules through Law 2011-302 of March 22 2011. As a consequence, the existing dispute resolution systems were suspended, as they had to be redrafted by AFNIC and approved by the competent minister.

The new SYRELI system applies to all domain names created or renewed after July 1 2011. Petitions, as well as all supporting documentation, must be sent to AFNIC in electronic form. The procedure is entirely electronic. Petitions and their supporting documentation must be provided in French.

Every petition is handled by an AFNIC rapporteur who checks that:

  • the file is complete;
  • all the required conditions are met;
  • the claimant has paid the €250 non-refundable fee; and
  • the domain name in dispute is not the subject of any current judicial or extra-judicial proceedings.

Once the rapporteur is satisfied that the file is complete, all transactions involving the domain name are suspended for the full duration of the procedure, which will last no longer than two months. The rapporteur then notifies the domain name holder, which has 21 days to provide an answer.

The decision will be rendered by a three-member panel (consisting of the director of AFNIC and two other AFNIC members appointed by the director) on the basis of the documents and statements filed by both parties. Therefore, no further research is carried out by the rapporteur or the panel, so the claimant must ensure that it has sent all the material required to establish that it has a valid interest to act and that:

  • the domain name at issue infringes its IP rights or personal rights, and the domain name holder has no legitimate interest in the domain name and is acting in bad faith;
  • the domain name is contrary to public order, morality or the rights guaranteed by the French Constitution or French law; or
  • the domain name is identical or related to a domain name of the French Republic, local authority or group of local authorities, or of an institution or of a local or national public service, and the owner has no legitimate interest in the domain name and is acting in bad faith.

The panel may decide to transfer or delete the domain name, or to reject the claim. However, in any case, it cannot award any damages to the claimant. The final decision is enforceable within 15 days of the notification of the decision to both parties. However, the enforcement of the decision may be suspended if, during this period, one of the parties sends the panel a document certifying that court proceedings involving the domain name at issue have been initiated.

The new procedure offers an efficient and cost-effective way to resolve domain name disputes, while the members of the panel are chosen in a transparent manner. This is a major improvement compared to the previous systems. Further, this procedure enables claimants to petition for the transfer or deletion of a domain name based not only on trademark rights, but also on other IP rights and on personal rights. Finally, the new system ensures that a decision is taken within a short period, since the panel must issue a decision within two months of the filing of the petition; moreover, the domain name holder must reply within 21 days, and the panel must issue its decision within 21 days of the expiry of the time limit given to the holder to reply. 

However, these benefits are undermined by two problematic aspects of the new dispute resolution system:

  • The fact that the new procedure may apply only to domain names created or renewed after July 1 2011 means that a legal loophole remains for all domain names registered or renewed before this date. With regard to these domain names, cybersquatting victims will need to wait until the next renewal of the domain name (domain names administered by AFNIC must be renewed every year) or institute substantive proceedings before the courts.
  • All proceedings before AFNIC are conducted exclusively in French. This means that the initial petition, the supporting evidence and all the following correspondence must be submitted in French. The AFNIC regulations even require that a party wishing to produce documentation which is not in French must provide a certified translation by a sworn translator. This requirement, which does not apply to proceedings before French courts, may considerably increase the cost of the procedure for foreign claimants.

Despite these flaws, the new system is laudable. It is likely that most IP rights owners will find strong advantages to the new dispute resolution system, and that many petitions will be filed after November 21 2011.

Jean-François Bretonnière and Thomas Defaux, Baker & McKenzie, Paris

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