No special treatment for local authorities under UDRP

In Commune de Tignes v Raymond (Case D2010-0076, February 23 2010), the French town of Tignes has failed to obtain the transfer of the domain name '' under the Uniform Domain Name Dispute Resolution Policy (UDRP).
The complainant, the Tignes local authority, filed a complaint under the UDRP with the World Intellectual Property Organization (WIPO) against two individuals, Laurence and Sandrine Raymond (based in Val d'Isère, France), seeking transfer of the domain name.
To obtain the transfer of a domain name under the UDRP, a complainant must prove all of the three following circumstances:
  • The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.
In 1997 the complainant acquired a French figurative trademark representing an outline of a snowy mountain with blue sky in the background and the term 'Tignes' in red in the foreground. The complainant subsequently extended the registration to all international classes and allegedly used it to support the development of the Tignes winter sports resort.
The domain name '' was registered on November 29 1997. Some 10 years ago, the complainant unsuccessfully sought to obtain the transfer of the domain name by filing proceedings against the respondents before a French court, claiming that the domain name infringed its TIGNES mark. On September 27 2001 the French court dismissed the action. The complainant thus decided to seek transfer of the domain name under the UDRP.
In order to substantiate the first limb of the UDRP, the complainant asserted that the domain name was confusingly similar to the textual element of its TIGNES mark. The WIPO panel took the view that 'Tignes' was the dominant element of the mark. Since that word was reproduced in the domain name, the complainant had satisfied the first limb.
Turning to the second limb of the UDRP, the complainant submitted that the respondents had no rights or legitimate interests in respect of the domain name given that they had allegedly failed to provide evidence of a link to, or association with, the term 'Tignes'.
The respondents submitted that they were natives of Tignes, and that the website to which the domain name pointed was non-commercial and dedicated to the history of the town of Tignes. In addition, the respondents highlighted the 2001 French court ruling deciding that the domain name did not infringe the complainant's rights. These arguments convinced the panel, which decided that the complainant had failed to establish the second prong of the UDRP.
Thirdly, the complainant sought to establish the respondents' bad faith by asserting that:
  • they would have been aware of the TIGNES mark when they registered the domain name; and
  • they did so to divert online traffic and take advantage of the notoriety of the mark.
As a further element showing bad faith, the complainant added that the respondents had requested €22,870 to transfer the domain name and that they had placed the domain name for sale on an online platform.
However, the respondents convinced the panel that their website was dedicated to the history of Tignes and did not involve any commercial activity. In addition, they successfully submitted that there was no intent on their part to sell the domain name, and that evidence submitted by the complainant did not prove otherwise.
The panel considered that there was no evidence of bad faith. For instance, the evidence produced by the complainant failed to show the respondents' intention to sell the domain name, but instead revealed that it was the complainant that had contacted the respondents to inquire about whether they would consider selling the domain name. The complainant thus failed to establish the third limb of the UDRP.
Finally, the respondents had also claimed that the complainant was guilty of reverse domain name hijacking on the basis that it was aware of the absence of legal basis for requesting the transfer of the domain name following the French court decision. The panel did not concur with the respondents on this particular point, as it considered the mere failure to succeed before the French court to be insufficient.
This decision is in line with previous decisions under the UDRP which, for instance, caused '' not to be transferred to the corresponding local authority (Puerto Rico Tourism Company v Virtual Countries Inc (Case D2002-1129)). It is clear that the UDRP is not designed to discriminate against types of complainants and, therefore, a local authority whose name has been reproduced in a corresponding domain name will not get special treatment from a UDRP panel, unless it can establish the three limbs of the UDRP like any other type of complainants.
Interestingly, the issue of the protection of geographical names in the domain name space gives rise to different solutions depending on extensions and jurisdictions. For instance, the names of Italian regions, provinces and municipalities are reserved from registration under the rules of the Italian Registry.
Going even further in protecting geographical names, the rules applicable to '.fr' domain names grant a protective status to names corresponding to French local authorities. This is as a result of Decree 2007-162 of February 6 2007 on the regulation of the French domain name space, which states as follows:        
"Unless otherwise permitted by the relevant local authority, the name of a local authority [...] can only be registered by this local authority [...] as a domain name under the country-code top-level domain. [...] However, the above provision shall not prevent renewals of domain names registered before the decree by a company whose name is identical to the domain name, and provided that a trademark application in the same name has been filed prior to January 1 2004 [...]."
Essentially, this provision means that a registrant could potentially lose its right to a '.fr' domain name if it is a match for the name of a French local authority and it does not hold a registered trademark in the term with a priority date pre-January 1 2004. This could clearly have significant consequences for any commercial entities that have been trading under the domain name.
It appears that geographical names can be granted with no specific protection (such as under the UDRP) or with a very protective regime which could impact on third parties' interests. This highlights the importance of seeking advice on restrictions applicable under particular extensions, as they might not be immediately apparent. Failure to identify such restrictions could result in being unable to register a domain name - or even worse, losing a domain name and the commercial activities that depend upon it.
David Taylor, Hogan Lovells (Paris) LLP, Paris

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