A judgement of the Cour d’appel of Paris dated November 8, 2016, reaffirmed the independence of the national courts against the WIPO decisions.
The WIPO (World Intellectual Property Organisation) arbitration and mediation center has jurisdiction to arbitrate domain name disputes in accordance with the Rules for the UDRP (Uniform Dispute Resolution Procedure). These rules were adopted by ICANN (the Internet Corporation for Assigned Names and Numbers) on August 26, 1999. Implementation rules for UDRP as well as the Supplemental Rules were drafted and approved by ICANN respectively on the September 28, 2013 and July 31, 2015. They implement the technical features of the procedure and serve as a practical guide for plaintiffs and defendants in order for them to properly carry out their claims.
This procedure constitutes an efficient solution to fight abusive registration and malicious use of domain names that infringe trademark rights. Furthermore, it is expeditious and guarantees the effective execution of a domain name transfer or cancelation.
To this day, 17 000 domain name disputes have been resolved by the UDRP procedure and its related procedures.
- The mandatory recourse to administrative proceedings
The requirements for the UDRP procedure are as follows:
- The domain name is identical or similar and likely to cause confusion with a registered trademark of goods or services over which the plaintiff has rights
- No right nor legitimate interest is attached to the domain name
- The domain name is registered and used in bad faith
Administrative proceedings are compulsory in the context of a contractual relationship between the reserving party of the domain name, the registration office and ICANN ; however it does not preclude the possibility of appeal on the merits before a court of competent jurisdiction.
- An appeal on merits is not excluded
Legal proceedings may be brought simultaneously, prior to or following administrative proceedings.
The UDRP procedure may be combined with legal proceedings. Res judicata only applies to judicial proceedings.
- The absence of res judicata
A UDRP decision does not acquire the effect of res judicata, as confirmed by a judgement of the Cour d’appel of Paris, of November 8, 2016 whhich opposed the Swedish company Team Ranger AB and the Maltese company Stone Age Ltd to Mr. X, a business man in Yemen.
The present case concerned Team Ranger AB, a company specialised in the design of goods and services in the mobile technology sector. . The company owns a community trademark named Moobitalk, registered on February 10, 2011 in classes 9,12 and 38 which covers telecommunications.
On April 17, 2011, Mr. X, who operates a whole range of services named Moobichat and Moobitalk located in the Near East and the Middle east, registered the moobitalk.com domain name. Communications costs being particularly steep in this area, the services proposed by Mr. X enabled users to exchange at attractive rates.
Team Ranger filed a UDRP complaint with the WIPO to order the transfer of the domain name which infringed its trademark rights. On July 29, 2013, WIPO ordered the transfer of the domain name in favour of the plaintiffs.
On April 14, 2014, Team Ranger AB relinquished its right over Moobitalk to the company Stone age Ltd.
On August 27, 2013, Mr. X brought an action before the Tribunal de Grande Instance of Paris to obtain recovery of the domain name moobitalk.com arguing that he is the legitimate holder.
In first instance, the judges admitted trademark infringement.
The Cour d’appel reversed the decision considering that trademark law is governed by the principles of specialty and territoriality, which extend to the Internet. As a consequence, considering the target audience in the Near and Middle East and the extension “.com” which refers to a commercial activity without any geographical meaning, the territoriality principle is applicable. Since one of the trademarks is protected in the European Union while the other is protected in the Near and Middle East, both trademarks may coexist as they do not target the same market. This is all the more applicable since Mr. X has a legitimate interest in owning this domain name on account of the communication costs in the area, and since he demonstrated his good faith during the UDRP proceedings against him.
Accordingly, both trademarks show no sign of any risk of collusion and the judges therefore ruled in favour of Mr. X by ordering the restitution of the domain name to its original owner.
From this case it is noteworthy that the judges are always susceptible of challenging a UDRP decision. This decision is in line with Miss France and “pneuonline.com” precedents. The Miss France judgement, delivered by the Cour d’appel on June 17, 2004, held that the UDRP procedure is similar to arbitral proceedings but does not acquire the effect of res judicata. Moreover, in the “pneuonline.com” judgement, delivered on January 31, 2008, the Cour d’appel of Lyon held that the distinctiveness of a previously registered trademark prohibits registration of subsequent domain names replicating this trademark and operating in the same field. This ruling was delivered in spite of the WIPO expert decision which denied the transfer on grounds of non-distinctiveness of the earlier trademark.