Ruling expected on legitimacy of domain blocking decision

France

The Versailles Court of First Instance is set to rule on the legitimacy of a decision by the Association Française pour le Nommage Internet en Coopération (AFNIC) to block a large number of potentially infringing '.fr' domain names.

On October 22 2004 AFNIC, the registry for the '.fr' country-code top-level domain, took the unprecedented step of blocking 4,465 '.fr' domain names for a period of three months. The names had all been registered by an individual named Laurent Nunenthal, a representative of a domain name registrar based in Luxembourg called EuroDNS. Blocked names still appear in the AFNIC Whois database, but cannot be transferred or deleted and no longer appear in the Domain Name System, meaning that access to any websites linked to them is denied. According to AFNIC, the names were blocked because the behaviour of Nunenthal ran contrary to the spirit of the AFNIC registration rules, in particular Article 19 relating to the protection of third-party rights.

Certain of the names registered are potential infringements of third-party IP rights, such as 'amzon.fr', 'ebai.fr', 'googele.fr', 'easyget.fr' and 'yahool.fr', and as a result AFNIC asserted that it had received several complaints from trademark holders. It therefore decided to block the names in order to allow third parties to enforce their rights. After three months only the names that are not subject to dispute resolution or litigation proceedings will be unblocked.

Potential registrations by non-rights holders have become possible only since the relaxation of the AFNIC rules on May 11 2004 (see AFNIC creates priority registration period for trademarks). Registrants now no longer have to comply with stringent rules requiring proof of a "right in the name" in the form of either (i) a French company registration certificate bearing the requested denomination, or (ii) a trademark covering France matching it. In short, a registrant can now register any domain name providing that he or she can supply proof of a link with France. In spite of this, Article 19 of the AFNIC registration rules clearly states that registrants have a responsibility to ensure that the names do not infringe third-party rights. Article 19 also states that names should not be contrary to public order or morality, and it is worth noting that the pornographic nature of many of the names registered by Nunenthal could also potentially breach this requirement.

In response to AFNIC's decision, EuroDNS contested the blocking at a preliminary hearing on November 9 2004 at the Versailles Court of First Instance. It argued that AFNIC had no right to block the domain names unilaterally, and that this was an attempt by AFNIC to circumvent dispute resolution or court proceedings instead of remaining impartial. For its part, AFNIC stated that blocking the names was the only way of protecting its reputation and avoiding becoming directly embroiled in litigation with rights holders.

The court will render its decision next week, but in the meantime it ordered Nunenthal and EuroDNS to transfer various names to third parties represented at the hearing. In addition, the court ordered that a transfer should be made upon the request of any other third parties who can present proof of a proprietary right in a domain name registered by Nunenthal.

David Taylor, Lovells, Paris

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