Transfer denied in 'dubious' domain name case

France
A panel from AFNIC, the registry responsible for the '.fr' (France) and '.re' (Reunion Island) extensions, has denied the demand of Virbac, a French laboratory dedicated to animal health, for the transfer of the domain name 'virbac17.fr'.
 
Virbac was founded in 1968 by a French veterinarian. It is present in more than 100 countries, and develops and distributes a wide range of products and services for the prevention and treatment of animal illness.
 
The case was decided under AFNIC's simplified alternative dispute resolution procedure for the recuperation of '.fr' domain names. AFNIC now offers a 'fast-track' procedure, known as the PREDEC, for cases of obviously abusive registrations where a domain name is identical or confusingly similar to:
  • the name of state institutions, public institutions or public services of the French Republic, the effect of which would be to create confusion in the mind of the public;
  • the name of a local authority without permission from the appropriate body;
  • a trademark, where the owner lacks any legitimate interest and is not acting in good faith; and
  • the surname of an individual, where the owner lacks any legitimate right or interest and is not acting in good faith.
The domain name 'virbac17.fr' was registered by a French citizen, Jean-Marie B (the respondent), on November 7 2008. The website linked to the domain name was apparently dedicated to a dog named Virbac 17 and the background of the website was decorated with dog paw prints.
 
Alleging that the registration and use of the domain name infringed its rights over the term 'Virbac', Virbac sent an email and a letter to the respondent in an attempt to reach an amicable solution, but did not receive any response. Virbac thus filed a PREDEC action against the respondent.
 
To obtain the transfer of the domain name under the PREDEC, Virbac needed to prove all of the three following circumstances:
  • The domain name was identical or confusingly similar to an IP right protected under national or community law;
  • The respondent lacked any legitimate right or interest; and
  • The respondent was not acting in good faith.
These requirements are very similar to those under the Uniform Domain Name Dispute Resolution Policy (UDRP), which is applicable to generic top-level domains and several country-code top-level domains.
 
Virbac alleged that it was known worldwide in the area of animal health. It also claimed that it held rights over the term 'Virbac', including the French trademark VIRBAC (registered in 1975), the domain name 'virbac.fr' and the company name Virbac. Virbac argued that the respondent neither had any right over the name Virbac nor had any legitimate interest to choose a domain name which was identical to the trademark VIRBAC, and could have done so only in order to profit unduly from the reputation of the mark. Finally, according to Virbac, the fact that the background of the website was made up of dog paw prints was a clear indication of bad faith from the respondent.
 
The respondent stated that he was not aware of the VIRBAC mark and that he had registered the domain name because it was available. The fact that a domain name is available is clearly not a defence to a bad-faith registration claim. However, the respondent submitted a defence apparently considered valid by the panel: he had chosen the term Virbac 17 because his dog's name was Virbac du hameau des quatre chemins, meaning 'Virbac of the four paths' hamlet'. Although this may sound fallacious, it appeared that the respondent's dog had actually been registered under this name in the French registry for pedigree dogs in 2004. The respondent explained that, because his dog's name was long, he decided to shorten it to 'Virbac' and to add the number corresponding to the French region where he lived, namely 17, for the purposes of the website.
 
The respondent also argued that the small number of visits to the website found at 'virbac17.fr' could not cause any harm to Virbac. Concerning the background of his website, the respondent indicated that dog paws were available in the software that he had bought to create his website and that he had no intent to harm anyone by using them.
 
The panel noted that Virbac duly held trademark rights in the term 'Virbac'. However, in the panel's view, the website to which the domain name was pointing did not create any risk of confusion between Virbac's business activities and the respondent's activities, and Virbac had not provided sufficient evidence relating to the respondent's lack of legitimate interest and bad faith. The panel thus held that Virbac had failed to establish the necessary elements of the PREDEC and denied the transfer of the domain name.
 
The decision is undoubtedly rather odd, given that it is highly likely that such a dubious defence would have been given short shrift by a UDRP panel (see, eg, YUM! Brands Inc v Ether Graphics, where transfer of the domain name 'colonelsanders.com' was awarded to the complainant, despite the respondent's assertions that it was the name of his pet guinea pig).
 
The decision underlines the fact that AFNIC panels will transfer domain names in accordance with the PREDEC only when there is no possible doubt whatsoever that the requirements have been fulfilled. Complainants who may not have a completely watertight case would thus be advised to use another avenue to recuperate the domain name in question, such as the procédure alternative de résolution de litiges du' .fr' et du '.re' par décision technique, also administered by AFNIC, or even French Court proceedings, both of which require a consideration of infringement of rights under French law instead.
 
David Taylor, Lovells LLP, Paris

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