The URL (Uniform Resource Locator) is a universal naming format which allows the identification of a resource on the Internet. When a trademark is reproduced in a social network’s URL, Internet users might think that the page is created by and for the trademark. This is however not always the case. This risk of confusion is highly prejudicial for the trademark. The Tribunal de Grande Instance of Paris, in a decision dated 29 January 2016, deemed that there was infringement of a trademark where a private sales website included the trademark in its URL in a transaction not authorised by the holder of the trademark.
In this particular case, the private sales website, specializing in decoration, “Westwing.fr”, was offering for sale carpets of the trademark “Un amour de tapis”, in accordance with an agreement with the company bearing the same name. However, another limited sale event had been organized, without the brand’s authorisation, at the address “westwing.fr/un-amour-de-tapis-choisissez-votre-classique” and the search engine Bing showed a commercial advertisement for this transaction.
The company then entered an action in court for trademark infringement as the trademark had been identically reproduced in the URL address, as well as for unfair competition and freeriding for having created a risk of confusion in the mind of the public and drawing profits from the investments and popularity of the trademark.
It won the case for infringement in the URL in accordance with Article L713-2 of the Code of Intellectual Property which prohibits the reproduction of a trademark, without modification or addition, for products or services that are identical to those stated in the registration. Indeed, the Court observed that the relevant URL address contained the verbal trademark, “the dashes in between each word only being insignificant differences”. This address made it possible to access the page on which the online sale took place and which itself mentioned the trademark, the latter being furthermore reproduced under each of the 74 carpets on sale.
Furthermore, the inclusion of the trademark right from the results page of the search engine Bing offering products that are identical or similar to those offered by the relevant trademark, or the inclusion of the sign in the link in order to redirect Internet users to the private sales website, thus creating confusion in the minds of the public who could assume that all the products offered for sale on the website have similar origins, are all characteristics of an infringement of a verbal trademark.
While the Court deemed that reference to the trademark in the commercial advertisement generated by a search engine and in the hypertext link to the website constituted an infringement, it did not however take into account the meta-tags of the website. According to the judges, the use of the trademark as reproduced in the source code of the website, “cannot be considered as an infringement of the trademark, insofar as the sign is not used in the source code to designate products and services and is furthermore not accessible to Internet users who used the search engine by typing in the relevant trademark.”