While it has become difficult to stand out on the web with now classic domain names such as <.fr> or <.com>, <.paris> represents a great opportunity for those who wish to gain more visibility.
The new gTLD <.paris> attaches to the domain name all that the city of Paris is known for: quality, elegance and innovation throughout the world.
Its many attractions have not gone unnoticed, as, by the end of 2014, more than 2,000 companies had already purchased a domain name ending with <.paris>, especially those in the luxury, gastronomy and innovation sectors. These figures rapidly increased and according to statistics from May 2015, there are now more than 18,000 domain names ending with <.paris>.
I. The distinctive features of <.paris>
The distinctive feature of <.paris> is that one has to belong to the community of Paris to qualify for registration. Indeed, under Article 2.1.1 of the registration policy of .paris, in order to register for or to renew a domain name ending with <.paris>, one should be a natural or legal person, established, in what could be considered as good faith, in the Paris region, at the time of, as well as after, registration. The applicant must be able to prove that it resides in the Paris region, or that it carries out professional, personal, commercial or cultural activities there, or it must be able to prove a direct or indirect link to the Paris region.
This requirement should not be taken lightly, because Article 9 of this registration policy specifies that “the registry operator has the right to reject, revoke or annul, at any time, any application for domain name, or any related registration, if it is found that the applicant has not satisfied the eligibility requirements in whole or in part”.
Interestingly, this requirement is exclusive to <.paris>. Indeed, applicants for the <.london> or <.tokyo> gTLDs, for example, do not have to prove belonging to the region.
II. Disputes surrounding .paris
Since <.paris> is still very new, there has been little in the way of case law, although there have been out-of-court decisions, and various disputes, including the cases of <match.paris>, <briochedoree.paris>, <laposte.paris> and <eleven.paris>.
Danone was able to obtain the suspension of the domain name <groupedanone.paris> on 5 June 2015, in a Uniform Rapid Suspension (URS) proceeding at the National Arbitration Forum (No 1618861). In this case, the fact that the domain name included the entire name of the company and the Danone trademark and associated it to the city of Paris, which is precisely where the company was founded, served to show that the applicant knew of the company and that it was acting in bad faith.
In another case, held this time before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, Société du Figaro obtained the transfer of the domain names <le-figaro.paris> and <lefigaro.paris> (D2015-0094). In this case, the applicant had tried to prove that the term ‘Figaro’ was a common word used to designate an opera character. But when linked to Paris, which is where the Figaro Company is headquartered, it became clear that the applicant had registered and used this domain name in bad faith. The fact that the ‘Figaro’ trademark was linked to Paris demonstrated the identity of the domain name with the trademark and therefore, the likelihood of confusion.
The same argument relating to the head office of the holder of the trademark was raised in URS proceedings on 31 March 2015 (FA1503001608773) concerning <lasamaritaine.paris>.
The <.paris> gTLD may, where there is a dispute, constitute an additional argument to demonstrate a domain name applicant’s bad faith where the holder of the trademark whose rights have been infringed is situated in Paris.
However, this is not always the case and experts do not yet agree on whether new gTLDs should be considered during the comparative examination of a domain name and a trademark in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings.
When UDRP proceedings were instituted in 1999, TLDs were extremely limited and were restricted to the original five and 247 country-code TLDs. Experts have therefore rapidly established a principle according to which TLDs must not be taken into consideration while assessing the identity or the similarity between the domain name and the trademark in question. It was generally accepted that the TLD should not be taken into consideration when comparing the signs due to its exclusively technical nature and it being an inherent part of the domain name system.
However, this principle is now being questioned in the wake of the new gTLD programme. In the first UDRP proceeding following the introduction of the new gTLDs, experts had to determine whether the domain name <canyon.bike> was identical or similar to the ‘Canyon’ trademark, registered for bicycles (D2014-0206). On this occasion, the experts pondered whether, in the context of new gTLDs, it is correct to take into consideration the TLD when assessing the identity or the similarity of the name with the trademark, although, in this case, they did not directly address this question, given that the domain name consisted of the ‘Canyon’ trademark in full in such a way that the identity was clear.
In another case, this time a dispute concerning the domain names <statoil.holdings> and <statoil.venture> (D2014-0369), the experts examined both cases: namely, the comparison of the signs without considering the gTLDs, and the comparisons with the gTLDs. However, the experts again declined to comment on whether it was relevant to consider them since in both cases, the signs were similar in such a way that the requirement in Paragraph 4 (a)(i) of the UDRP principles was fulfilled.
In a case concerning the domain name <zionsbank.holdings> (D2014-0269), the experts examined at length the relevance of taking new gTLDs into account. In that case, however, it was considered that the term “holdings” at the end of the domain name at dispute made it impossible to establish that the domain name was identical or similar to the ‘Zions Bank’ trademark. Nevertheless, they specified that, depending on the case at hand, the examination of the gTLD could impact on the analysis of the requirement set out in 4(a)(i).
Several URS proceedings relating to new gTLDs have revealed the experts’ willingness to take into account the new gTLD in examining the likelihood of confusion between the domain name in dispute and the trademark.
In this light, a 1 April 2014 case of 1 April 2014 regarding the registration of the domain name dior.clothing (FA140201546033) is noteworthy. In this case, the experts took into consideration the fact that the disputed domain name was registered in a gTLD (.clothing) which explicitly refers to the business that the complainant is active in.
Similarly, an 11 June 2014 case, where the issue was the registration of the domain name parissaint-germain.club (FA1406001563159), the experts said: “The generic word ‘club’ which serves as a gTLD does not distinguish the domain name. Furthermore, it rather increases risk of confusion since the complainant’s main activity is maintaining a football club.”
To conclude, it is impossible for the time being to state that new gTLDs should be taken into consideration during the examination of the identical or similar nature of domain names in relation to trademarks during UDRP or URS proceedings. Indeed, the experts seem reluctant to enunciate such a principle and have until now, especially in UDRP proceedings, not been clear on the issue of whether and to what extent these gTLDs should be taken into consideration. This is not surprising since the new gTLDs, publicly accessible since 2012, represent a significant evolution from the classic TLDs around which case law has been constructed. The situation is now expected to evolve.