WIPO ruling shows French system offers greater protection
A World Intellectual Property Organization (WIPO) panel has issued a decision under the Uniform Domain Name Dispute Resolution Policy refusing to order the transfer of the domain name 'vachette.com' to the complainant company Vachette - a leading manufacturer of lock systems in France.
The domain name was registered in the United States by a US company called Syncopate.com, involved in conceiving new names and brands for start-up companies, and also creating and selling related domain names. At the time of the proceedings, Syncopate was offering the brand name and related domain to a financial services start-up.
The WIPO panel held that the French company had failed to prove that Syncopate had no rights or legitimate interests in respect of the domain name. The panel agreed that Vachette had provided evidence demonstrating that its mark was well known in France in relation to lock systems. However, the French company did not provide any evidence of such reputation in the United States and had not registered the trademark VACHETTE in that country. Syncopate's policy was to conduct prior trademark searches only in the United States and it was consequently unaware of the trademark VACHETTE at the time it registered 'vachette.com'.
Although the disputed domain name simply transferred users to the homepage of 'wownames.com' - which indicated that 'vachette.com' "may be available to new start-ups" - the panel concluded that it was being used for the bona fide provision of goods and services as Syncopate was offering the name to other companies as part of its service.
If Vachette had brought its action before the French courts, the chances of success would have been greater. Under French law, if the owner of a trademark protected in Class 38 (which Vachette has owned since 1997) brings an action against the registrant of an identical domain name that is not being used by its owner, the court will find trademark infringement and order the transfer of the domain name. Whereas the WIPO panel held that the domain name was in use, it is likely that the French courts would not have considered this to be the case and thus a Class 38 registration in France would have been a sufficient basis upon which to order its transfer.
Karina Dimidjian, Bureau DA Casalonga-Josse, Paris
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