New episode in the 'vente-privee.com' saga

France

In Vente-privée.com v MW, the Lyons First Instance Tribunal has contributed to the current judicial debate on whether the trademark consisting of the domain name ‘vente-privee.com’ (‘vente privée’ means ‘private sale’ in French) could be considered well known for the purpose of French law. This comes after the Paris First Instance Tribunal issued two contradictory decisions at the end of 2013 on this very issue, leaving it to the Paris Court of Appeal to set the tone in a much anticipated decision.

The claimant was SA Vente-privée.com, a French company operating a major e-commerce platform allowing its registered users to have access to offers for goods and services from many companies at significantly reduced prices. The claimant's main website is at ‘http://www.vente-privee.com’ and it currently boasts 14 million registered users, making it one of the most visited e-commerce websites in France. The claimant has registered the French trademarks VENTE-PRIVEE and VENTE-PRIVEE.COM. It also uses the term 'vente-privee.com' as part of its corporate name and trade name, and owns the domain names ‘vente-privee.com’ and ‘vente-privee.fr’ (both with and without the hyphen).

The defendant was a French national who registered the domain name ‘venteprivees.fr’ (and not ‘venteprivees.com’ and/or ‘vente-privees.fr’, as variously referred to in the decision). The defendant had been involved in a number of Uniform Domain Name Dispute Resolution Policy proceedings before the World Intellectual Property Organisation, which he lost. The domain name pointed to a pay-per-click parking page with advertising targeting the goods and services corresponding to the claimant's trademark registrations.

The claimant sent several cease and desist letters to the defendant, but to no avail. The claimant then initiated proceedings before the Lyons First Instance Tribunal on the grounds of trademark infringement and unfair competition. The rights relied upon by the claimant were not limited to its trademarks, but also included its corporate name and domain names. The defendant did not respond or appear before the tribunal.

The tribunal decided in favour of the claimant. The defendant's registration and use of the domain name was found to constitute both an infringement of the claimant's trademarks and an act of unfair competition in violation of the claimant's corporate name, trade name and domain names. The tribunal decided that the trademark consisting of the domain name ‘vente-privee.com’ was well known for the purpose of French law, and could thus benefit from a higher standard of protection whereby, for instance, a risk of confusion was not required for a finding of infringement. The tribunal ordered, in essence, a transfer of the domain name to the claimant and the payment of fines and damages by the defendant.

The cornerstone of the case was the substantial evidence produced by the claimant to show the significant goodwill and renown of the ‘vente-privee.com’ trademarks, corporate name, domain names and business. The claimant went to great lengths to demonstrate the fame of its brand, and produced numerous press articles, data on internet traffic and advertising spending and awards, among other things.

This decision will make it more likely that the Paris Court of Appeal will harmonise the contradicting decisions from the Paris First Instance Tribunal, in favour of a recognition of the VENTE-PRIVEE.COM mark as a well-known trademark.

David Taylor and Vincent Denoyelle, Hogan Lovells LLP, Paris

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