Registrants of generic domain names will find themselves with no or little recourse
In a recent decision before the Bastia Court of Appeal, a domain name holder was denied the transfer of a confusingly similar domain name for lack of distinctive character of its domain name.
The complainant was Iris Media, a company based in Ajaccio, France, that operates a website which is an online portal of its wedding services suppliers in Corsica, such as photographers and venues. To this end, the complainant registered the domain name ‘mariagesencorse.com’ on September 11 2009 and the trademark MARIAGESENCORSE.COM with the French Trademark Office in 2010. The phrase ‘mariages en Corse’ translates in English to ‘weddings in Corsica’.
The respondent was Angela A, the owner of a wedding planner company, Noces de Soie, based in Casanova, France. The respondent registered the disputed domain name, ‘mariageencorse.com’ on February 14 2010 and was using it to redirect users to her website ‘www.nocesdesoie.com’ and her own network of wedding services suppliers.
The initial court case was brought in October 2011 before the Ajaccio Commercial Tribunal by the complainant. The only difference between the two domain name registrations was that the earlier registration of the complainant was the plural form of the second registration by the respondent. The purpose of the complainant's action was to seek the transfer of the singular version of the domain name and to obtain compensation for its use by the respondent on the grounds of unfair competition. In support of its claims, the complainant argued that the domain name ‘mariageencorse.com’ was confusingly similar to its own domain name registration ‘mariagesencorse.com’. The first instance tribunal decided that the registration of ‘mariageencorse.com’ was a misuse of ‘mariagesencorse.com’, based upon unfair competition and parasitism due to the confusing similarity of the domain name.
However, this decision was overturned in the Court of Appeal, which considered that the term ‘mariages en Corse’ was too generic to be protected, and stated that:
"according to the principle of free competition, only the holder of a distinctive domain name can benefit from the protection based on Article 1382 of the French Civil Code and unfair competition, since the simple registration of a domain name with a naming authority do not grant any exclusive right nor any proper legal status."
Further to this, the Court of Appeal added that the complainant could not seek protection of the domain name since it was a generic term simply describing the activity of the company, even if there was a risk of confusion, which is one of the requirements for a finding of unfair competition. More precisely, the Court of Appeal stated that the domain name was a mere juxtaposition of a generic term and an origin, adding that:
"while a risk of confusion could exist in the mind of the consumers, the complainant cannot avail himself of any protection regarding the domain name, since its generic character is merely descriptive of its activities".
This decision illustrates the position of French law and French courts in relation to the protection of domain names which will not be generally protected when they are generic terms, unless they have acquired distinctiveness. As domain names can be freely registered on a ‘first-come, first-served basis’ and can be protected only via general rules of tortious liability, domain name registrants need to be aware of the importance of the distinctiveness of the terms they choose to register, as they will find themselves with no or little recourse when their domain name registration merely consists of generic and descriptive terms.
David Taylor, Olivier Pensini and Vincent Denoyelle, Hogan Lovells LLP, Paris
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