Typosquatter ordered to pay damages to '2xmoinscher.com' owner
Legal updates: case law analysis and intelligence
In Trokers v Web Vision (April 2 2009, only recently published), the Paris Tribunal of First Instance has confirmed that domain names remain a recurrent source of case law that require the courts to be innovative in addressing new situations.
The case involved a French website, '2xmoinscher.com' (which may be translated as 'half price'), which acts as a platform for internet users wishing to buy and sell new or second-hand products. Trokers, the company owning the website, had registered several trademarks and domain names covering its business and commercial name, 2xmoinscher. However, in the course of 2006 and 2007, it discovered that another company, Web Vision, had typosquatted its domain names by registering '2moinscher.fr', '2xmoinschers.fr' and '2xmoinscheres.com'.
Domainers often attempt to capitalize on their domain names by pointing them towards pages containing sponsored (or 'pay-per-click') links. An income for the domainer is generated if users click on the links and are redirected to a website whose owner has agreed to pay the company behind the sponsored links for driving traffic to its website.
Web Vision opted to point its domain names towards the legitimate '2xmoinscher.com' website. Therefore, on the face of it, Trokers may have decided not to take any action against Web Vision. However, Web Vision first rerouted the domain names through an affiliation system resembling the abovementioned sponsored links system. The affiliation system was run by a company called Cibleclick, which Trokers paid to reroute traffic to its website. Cibleclick then passed a percentage of this payment on to the owner of the websites responsible for redirecting the traffic - in this case, Web Vision (via the typosquatted domain names). Therefore, every time internet users misspelt the URL of Trokers' website and typed in a typosquatted domain name instead, they were in fact being driven to Trokers' website, but Trokers was indirectly paying Web Vision for this.
When it became aware of this situation, Trokers attempted to recover the domain names in question, but Web Vision decided to release them without transferring them to Trokers. Despite the release of the domain names, Trokers decided to bring action before the French courts to obtain damages for:
- trademark infringement;
- copyright infringement of the title of its website; and
- trade name and domain name infringement.
The Paris Tribunal of First Instance first found that there was no trademark infringement. Under French trademark law, a domain name is regarded as infringing a trademark only if the website to which it points offers goods or services identical or similar to those covered by the trademark registration. When redirecting towards the legitimate '2xmoinscher.com' domain name, Web Vision was not using the domain names to offer its own products or services to create confusion in the mind of the public.
The tribunal then rejected the argument that the registration of the domain names constituted copyright infringement of the title of the website. In April 2006 the tribunal had acknowledged that the registration of a domain name could constitute infringement of the copyright held by a company in the name of its software. However, in the case at hand, Trokers had failed to establish (and even allege) that the title of the site, 2xmoinscher, was original and, therefore, eligible for copyright protection. This, along with the fact that the domain names were actually pointing to the original website, prevented Trokers' copyright infringement claim from succeeding.
Trokers nevertheless managed to obtain compensation for what the tribunal referred to as 'domain name infringement'. The decision, however, seems to indicate that the tribunal decided to sanction Web Vision for 'parasitism' - in other words, taking undue advantage from Trokers' investment in '2xmoinscher.com' to obtain monetary gain. The tribunal noted that, in effect, Web Vision was imposing the provision of a service on Trokers (namely, the redirection of internet users) which it had not consented to, but was being forced to pay for without knowledge or agreement.
The tribunal decided that this constituted domain name infringement. One could argue that this was a convenient way of awarding €15,000 in damages to Trokers (plus €7,500 in costs), even though it had not relied on the appropriate grounds to obtain compensation.
David Taylor and Lionel de Souza, Lovells, Paris
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