mardi, novembre 23, 2010

France: Generic domain name bears fruit

Generic domain name bears fruit

Contributed by Hogan Lovells

 

Background
Domain name rights
Trademark infringement
Decision
Comment


La Cerise Bleue, a French company, recently won a complaint filed with the World Intellectual Property Organisation (WIPO) under the alternative dispute resolution procedure for '.fr' domain names, known as the Procédure Alternative de Résolution des Litiges (PARL), concerning the domain name 'lacerise.fr'.

Background

The domain name was registered in 2008 and used in connection with an online promotional programme to which internet users could subscribe free of charge. The complainant held the French trademarks CERISECLUB and LA CERISE BLEUE, registered in 2006 and 2007 respectively. It also registered the domain name 'ceriseclub.com' in 2006 and had since been using the site to provide price comparison services and a guidebook for online consumers.

When it discovered that French company W SAS had registered the domain name 'lacerise.fr', the complainant contacted the respondent in an attempt to settle the matter amicably. The respondent replied by offering to transfer the domain name to the complainant for €10,000. The complainant refused the offer and filed a complaint before WIPO under the PARL.

The PARL is an alternative dispute resolution procedure under which the complainant must prove that the domain name in question either infringes its rights or violates French or EU competition rules. An infringement of the complainant's rights occurs when a domain name is identical or confusingly similar to a name in which French and/or EU trademark rights exist, unless the respondent can prove that it has a right or legitimate interest in the domain name and acted in good faith.

Domain name rights

The complainant claimed that it had rights over the domain name because it had registered and was using the trademark CERISECLUB as part of its website, www.ceriseclub.com.

Countering this first submission, the respondent argued that the complainant had no rights over the term 'cerise', as it had not set up any company named La Cerise Bleue. In addition, the respondent argued that the term 'cerise' made reference not to the complainant's trademark, but to a generic term. Indeed, the word 'cerise' in French means 'cherry'. Finally, according to the respondent, the complainant displayed a blue cherry on its website, while the website at the domain name did not.

The panel highlighted that:

·                          the term 'cerise' was the common element between the trademarks CERISECLUB and LA CERISE BLEUE and the domain name;

·                          this term could be considered as the distinctive element of the trademarks; and

·                          the trademark CERISECLUB was used in relation to the complainant's website.

The complainant had therefore established that it had rights over the domain name.

Trademark infringement

Turning to the question of whether the domain name infringed the complainant's rights or violated French or EU competition rules, the complainant pointed out that the respondent had created confusion between its own website and the complainant's website, thereby interfering with the complainant's rights.

The respondent argued that registration and use of the domain name did not constitute infringement of third-party rights or competition rules. The respondent said that it had registered and used the domain name in order to assist its clients in better managing the commercial information they wished to receive. According to the respondent, the domain name and the associated website were created in order to avoid any interference with the website www.dromadaire.com, run by the respondent and described by the respondent as being the worldwide leader in the market of online greeting cards. The respondent further contended that the domain name was of no strategic importance to its business, and that its activities in relation to the website www.lacerise.fr were marginal and residual. According to the respondent, this was why it had agreed to transfer the domain name to the complainant for €10,000, as this sum would have covered its expenses relating to the redefinition of the website.

The panel noted that the respondent had registered the domain name after the domain name 'ceriseclub.com' and the trademarks CERISECLUB and LA CERISE BLEUE had been registered, and further that the domain name partially reproduced these trademarks. The panel explained that under French law, the partial reproduction of a trademark to designate products or services that are identical or similar to those designated by the trademark registration certificate is not permitted if there is a risk of confusion in consumers' minds. The panel thus analysed the activity conducted on the website to which the domain name pointed and compared it with the products and services designated by the prior trademarks of the complainant, including renting advertising space and displaying classified advertisements.

The panel declared that it was convinced that the promotional programme provided by the respondent via its website was similar to the activities of the complainant under the trademark CERISECLUB – namely, the display of classified advertisements. The panel noted that under French law, the risk of confusion must be considered from the point of view of the average consumer. The panel also considered that, in accordance with French case law, trademark infringement occurs as soon as the essential element of a trademark - which can be considered as the distinctive element of the trademark - is reproduced. It concluded that the term 'cerise' could be considered as the distinctive element of the trademark CERISECLUB, and that the use of the term 'cerise' by the respondent to designate a service providing promotional offers could create confusion in the minds of consumers.

Decision

The panel decided that the registration and use of the domain name infringed the trademark rights of the complainant. The panel also considered that the respondent had not proved that it had any rights or legitimate interests in the domain name and could not be considered as having acted in good faith, since it had offered to transfer the domain name for €10,000 – especially given that it itself had admitted that the domain name was not strategic to its activity. As a result, the panel decided to transfer the domain name.

Comment

Panels deciding PARL cases have established a comprehensive framework around the use of domain names in recent years and this decision underlines the important differences between the PARL and the Uniform Domain Name Dispute Resolution Policy (UDRP), even though the PARL is classified by WIPO as a variation of the UDRP.

For further information on this topic please contact David Taylor or Sarah Taïeb at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (david.taylor@hoganlovells.com or sarah.taieb@hoganlovells.com).