France: Service providers must transfer domain names registered on behalf of their clients

Noms de domaineTea Adoro, a company holding four Tea Adoro trademarks, operates tea houses, tea bars and delicatessens. In view of expanding its business, Tea Adoro uses the service of an external provider to create its websites and to register its domain names. However, in the Whois database, the service provider is the holder of the domain names in dispute. In addition, Tea Adoro is deprived of the codes for access to social networks and cannot have control over the relevant web pages.

This is a serious situation! Companies may as such be technically and financially dependent upon their service providers and domain names’ holders, and it may drive to cybercrime and commercial blackmail.

Tea Adoro accordingly filed a motion before the Tribunal de Grande Instance de Paris against the service provider that created its websites, in order for the domain names to be transferred back and for the access codes to be communicated so that it can have actual control over the disputed domain names.

The Presiding Judge of the Tribunal de Grande Instance de Paris, by virtue of an interlocutory order issued on 16 March 2015[1], ordered the service provider to transfer the registered domain names to Tea Adoro.

After restating his jurisdiction, the Presiding Judge of the Tribunal de Grande Instance de Paris found that the evidence provided was insufficient to show a breach of trademarks. However, the receipts and exchanges of emails determine that the registration of domain names was performed by the service provider on behalf of Tea Adoro. The Judge in chambers states that “this situation qualifies as a manifestly illegal nuisance” due to the fact that Tea Adoro is unable to use the trademarks and therefore to carry on with the online selling of products under these trademarks. Therefore, he ordered the transfer of domain names and for the communication of access codes to social networks.

This matter shall be considered along with a judgement of 9 June 2009[2] in which the Cour de Cassation held that the transfer of a domain name could not be obtained in chambers (en référé) under article 809 of the Civil Procedure Code which states that the Presiding Judge of the Tribunal may take protective or restoration measures in order to prevent an imminent damage or to end a manifestly illegal nuisance. According to that judgement, the transfer of a domain name does not qualify as “either a protective measure or a restoration measure.” If the transfer of a domain name cannot be obtained in chambers under article 809 of the Civil Procedure Code, this decision delivered by the Tribunal de Grande Instance de Paris specifies that the procuring of the transfer of a domain name by virtue of a quick judicial proceeding is however possible by means of a special motion as provided at article L.716-6 of the Intellectual Property Code in relation to trademark infringement. This solution shall meet the requirements of trademark holders.

[1] TGI Paris, 16 March 2015, Tea Adoro and Mrs R. / Millenium Brands Distribution c.v. and Millenium Sales & Marketing Ltd

[2] Cass. Com., 9 June 2009, n°08-12.904