No trademark protection for descriptive domain names
In Fédération Française des Bois Tropicaux et Américains v Codina Inc, the Douai Court of Appeal has overturned a lower court ruling that extended first-come, first-served trademark protection to the domain name 'boistropicaux.com' (translated as 'tropicaltimber.com').
The Fédération Française des Bois Tropicaux et Américains (a French forestry association) registered the domain name 'boistropicaux.com' in November 1999 to host a website providing information on tropical wood, and other plant and forestry species. Codina Inc, a US company, registered 'bois-tropicaux.com' in July 2000 for a similar website.
The association brought a claim before the District Court of Lille to obtain the transfer of Codina's domain name. Codina moved to have the claim dismissed on the basis that 'boistropicaux.com' was lacking distinctiveness and therefore should not be protected.
The court rejected Codina's argument, reasoning that the association obtained trademark rights because it had registered 'boistropicaux.com' first. The association could therefore legitimately oppose any subsequent registration of a domain name similar to 'boistropicaux.com'.
The appellate court, however, considered that 'boistropicaux.com' was descriptive of the website's contents and as such was closer to a keyword than a trademark. The court concluded that the association's domain name was not a distinctive sign and thus, refused to transfer 'bois-tropicaux.com' from Codina to the association.
Marc-Roger Hirsch, Cabinet Hirsch & Associés, Paris
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