The Council of the European Union makes observations and specific proposals in four areas: biotechnology, geographical indications, control of intellectual property policy and design rights enforcement. It welcomes (pt 8) the opinion G 3/19 issued on 14 May 2020 by the Enlarged Board of Appeal of the European Patent Office, in which it was concluded that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products obtained exclusively by means of such processes. It further welcomes (pt. 9) the fruitful discussions between the European Commission and the Member States on Directive 98/44/EC of the European Parliament and of the Council on the patentability of essentially biological processes for the production of plants or animals and of the products obtained by such processes, which have been conducted with the aim of achieving a deeper understanding of the Directive and the corresponding provisions of the European Patent Convention.
Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.
ICANN has proposed a project to create a System for Standardized Access/Disclosure (SSAD), which would allow standardized access to non-public data on domain name registrations.
The objective of the SSAD is to provide a predictable, transparent, efficient and accountable framework for access to non-public registration data. It must also be consistent with the GDPR.
However, the decision whether or not to grant requests would still belong to the registrars, as legal constraints on personal data may vary from country to country.
This project accelerated in August during Stage 2 of the policy development process, during which a final report was presented that provides 22 recommendations for the system.
The creation of this SSAD could, in the coming years, facilitate the fight against cybersquatting, which has been strongly impacted by the GDPR and WhoIs anonymization processes. It should be remembered that the next round of requests for domain name extensions should take place in 2023, bringing a whole new set of challenges in the fight against Internet attacks.
The top-level domain name extension <.sucks> was open for registration by ICANN in 2015. At the time, some brands were already concerned about the risk of cybersquatting on these extensions, and the possible damage to the brand image that this could generate. In fact, many domain names that use trademarks known and ending in <.sucks> were born. Very often, these domain names refer to pages where Internet users can complain about the brand in question, whether they are consumers or former employees.
During the past months, the phenomenon has intensified with a lot of reservation numbers, clearly done by the same registrar of the domain name in <.sucks>. Suddenly, new online pages have emerged, with the same structure and bad comments about renowned brands. A system of resale at prices between $199 and $599 is also in place.
The question of the dispute resolution about the <.suck> is complex, since the situation raises issues relating to freedom of expression.
Two recent cases with two opposite outcomes illustrate this complexity. The domain names <mirapex.sucks> and <bioderma.sucks> were both registered by the same registrar and are both the subject of UDRP complaints. In response to these two complaints, the defendant based his argument on freedom of expression. For <mirapex.sucks>, the complaint was unsuccessful, on the contrary, for <bioderma.sucks>, the name transfer was ordered.
In the case of <bioderma.sucks>, the expert had taken into consideration the fact that the registrar didn’t use the domain name for bad comments on the trademark in question but was simply a third party who registered the domain name seeking to resell it. The reseller was a company located in the Turks and Caicos Islands whose activity is the purchase and resale of names in <.sucks>. The latter had no way of verifying if the bad comments were authentic. Especially because those comments seemed to have been added only after the complaint was filed.
On the other hand, in the decision on <mirapex.sucks>, reserved by the same company, the transfer was refused. The expert gave special attention to the nature of the <.sucks> and to the freedom of expression, while underlining the insufficiency of the argumentation of the applicant.
One thing is sure: prevention is better than cure, therefore it would preferable to register a brand in the extension <.sucks>, on a purely defensive basis.
If Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.
On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.
In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;
* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.
Thus, it seems possible to add a reserved name to a complaint after the filing.
Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.
All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.
In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.
Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.
Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.
In February 2020, the applicant allegedly asked one of its employees to proceed with the registration of the name <cobrajetaviation.com> on his behalf. The latter would thus have reserved the name using his personal credit card first, and being reimbursed by the applicant later. When the job contract ended, he would have refused to transfer to the applicant the information she needed in order to take control over the domain name and its related website. This is a very common dispute and, once again, it give us the chance to recall the importance of establishing naming charter within the company and the importance of assuring the respect of good practices: each domain name must be reserved by the company and with a generic e-mail address of type nomsdedomaine@entreprise.com.
Moreover, since this dispute involves a contractual dispute rather than a dispute over the on a classic case of cybersquatting, the expert rejects the complaint believing that it is for the courts to deal with this matter which “generates questions of contractual breaches, breaches of contract, breaches of fiduciary duties and potentially questions related to local labor laws”. The expert also said and pointed out that even if he could have known about the case on the merits, he would certainly have rejected the complaint, for two major reasons.
On the one hand, in order to prove its right on the trademark, the applicant has submitted the certified translation of a trademark application in Egypt, filed on January 26, 2020 and not yet registered. The expert also notes that a certified translation is not enough to determine who is the true owner of the trademark and that the copy of the original document was missing as wall.
On the other hand, the expert believes that the applicant’s arguments are insufficient to demonstrate the defendant’s bad faith. He did not gave proof of the instructions addressed to the employee; therefore, it is not possible to determine whether he or she has complied with them. However, the UDRP procedure involves proving both the registration and the use of the name in bad faith.
Therefore, it is necessary to ensure that the complaint has a chance to succeed within the framework of the UDRP action, that it does not go beyond its scope and prepare the argument and the most important thing is to provide evident proof of its trademark right; presenting the request for a trademark that does not confer any protection. It should be also noted that the applicant gave an insufficient presentation of herself within the complaint, at the point that the expert indicates that they “presume” that the applicant is active in the aviation sector.
Source: WIPO, Arbitration and Mediation Center, Nov. 5, 2020, aff. No. D2020-2024 Cobrajet, Inc. v. The Endurance International Group, Inc,
Published in June 2020,EUIPO’s “2020 Status on IPR Infringement” reportshows that e-commerce has fostered the phenomenon of counterfeiting. The majority of counterfeit products come from Asia. These products are reconditionned in smaller boxes in countries such as Albania, Ukraine or Morocco.
Due to the forced closure of stores, consumers increased their online purchases. Thus, the counterfeiting phenomenon expanded, as well. According to this report, most consumers are attracted by a cheaper price, but they are completely unaware that they are buying a counterfeit product.
The report shows that:
– More than 50% of internet buyers search Google, Amazon and other marketplaces before buying. They look for the product description, features, price and possible discounts.
This is what can lead them to choose websites promoting counterfeit products, since:
– 70% of buyers opt for counterfeiting for price reasons.
– 82% of the buyers had indicated that they would continue to buy online even when the stores reopen.
In addition, a survey published by the French consumer association UFC- Que Choisir, on October 22nd, 2020, showed that online frauds, on an online purchase, are not always reimbursed by banks. Only one out of three frauds per year was reimbursed last year. The bank generally blamed the consumer for negligence.
The new DSP2 Directive (European Payment Services Directive 2nd version) requires that the transaction must be confirmed by the bank through a “strong authentication” system, when making an online purchase. The French authorities have given a deadline for the first quarter of 2021 for all the banks to be compliant.
In light of these elements, companies must actively protect their intellectual property rights, including property on the Internet, to avoid the drop in sales and the loss of customers. Indeed, it is known that consumers who are victims of a scam will tend to turn away from the company whose products or services have been counterfeited.
An effective defence of the brand on the Internet is carried out through a strategy that includes prior searches and surveillance. The prior search provides a snapshot of the current situation of the trademark on the Internet (existing infringements, potential prior art in certain countries, etc.). The surveillance allows the detection of all domain name registrations reproducing or imitating the trademark, from the moment the surveillance is set up. It keeps in check any potential infringement as soon as it is detected.
Guerlain filed a successful appeal before theParis Court of Appeal. The court rendered its decision on September 22, 2020, ruling in its favour: the sign “Le Frenchy” is sufficiently distinctive and is not descriptive, for the concerned goods.
In the contested decision, the Director of the INPI had considered that English is predominant in everyday language and that many expressions including the term “French”, such as “French manicure” or “French tech”, are commonly used in commerce. He added that the addition of the vowel “y” to the adjective “French” does not change the nature of this slang Anglicism.
Guerlain states that the term “Le Frenchy” evokes a “little Frenchman” in slang and that this reference to the French spirit alone is not enough to deprive the sign of distinctiveness.
The Court of Appeal agreed with Guerlain’s arguments, holding that “Le Frenchy” evokes “a person representing a style, a French way of life, a spirit” and not directly the origin of the good.
The combination of the article “le” and of the term “Frenchy” is unusual and arbitrary in relation to the goods in question. Therefore, the sign does not lack of intrinsic distinctiveness within the meaning of Article L.711-1 of the Intellectual Property Code. Similarly, it is not descriptive, within the meaning of Article L.711-2 b), of the goods concerned, as this trademark does not designate a characteristic of the goods, but rather aims to qualify the person who might consume the goods.
It might be assumed that the trademark was saved because the sign “Le Frenchy” includes a form of slang which is not directly related to the goods in question.
The decision might have been different if the sign at stake mainly comprised the word “French”.
For example, theEuropean Union Intellectual Property Office (EUIPO) rejected the trademark ‘LIVE THE FRENCH WAY’ on December 9, 2019 for lack of distinctive character in relation to the services covered in classes35,39 and43, as it would be perceived as a “laudatory promotional slogan”.
In any event, in case of doubt as to the validity of a sign, it is advised to file the projected trademark in semi-figurative form, if it is intended to be used in a stylised manner. Graphic elements increase the distinctiveness of a sign.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.
(WIPO Arbitration and Mediation Center Natixis Intertitres v. Super Privacy Service LTD c/o Dynadot / Fredrik Lindgrent Case No. D2020-1383)
Being the owner of a trademark that is identical to the disputed domain name is a real advantage in the UDRP procedure. Nevertheless, it is necessary to prove that the respondent was aware of said trademark rights, which is quite complicated when the trademark at issue hasn’t been widely advertised.
Natixis Intertitres, the subsidiary of Natixis, a French internationally known corporate company, holds the registered trademark “INTERTITRES”. This subsidiary filed a complaint before the WIPO Arbitration and Mediation Center in order to obtain the transfer of the disputed domain name <intretitres.fr> registered by a third party without authorization.
During the procedure, the identity of the registrant was disclosed, revealing a Swedish owner.
The Complainant sustained that the domain name was registered in reference to its trademark without any relation to the generic definition of the term “intertitres” especially considering that, in the French language, as in the French dictionary, the term is generally used in the singular form.
Moreover, the complainant finds the configuration of mail servers on a domain name that doesn’t refer to any website “suspicious”. Natixis Intertitres sustained that the Respondent’s intention was to take undue advantage of the Complainant and its trademark’s reputation.
The Respondent didn’t submit a formal response to the complaint but stated that he had reserved the domain name in order to create a site related to literature.
The expert in charge of this dispute acknowledges the likelihood of confusion between the trademark and the subsequent domain name, as well as the lack of proof of legitimate interest by the Respondent, who didn’t really explain the choice of this domain name.
However, the expert is not convinced by the Complainant’s arguments as regards the bad faith criterion. In this respect, he highlights two important points.
Firstly, there is no evidence that the Swedish-based registrant was aware of the trademark “INTERTITRES”. Natixis is certainly internationally known as a company, but this is not the case for its “INTERTITRES” trademark, which designates lunch vouchers mainly available in France. These vouchers are rather known under the names of “CHEQUE DE TABLE” or “APETIZ”. Therefore, it is unlikely that the Respondent was aware of this trademark.
Secondly, “INTERTITRES” is mainly a generic term. The fact that dictionary definitions are given in the singular form does not mean that the term does not exist in its plural form.
The complaint is therefore rejected.
In view of the above, it is essential for right holders to be aware of the scope of protection that their trademark can enjoy. Is the trademark sufficiently well known in the registrant’s country so that it is reasonable to assume that they had it in mind when they reserved the name? This question must be carefully considered, especially when the trademark has also an everyday language meaning and the disputed domain name is not used for an activity similar to the one for which the prior trademark is used. In this regard, the expert rightly pointed out that using a domain name primarily for having a letterbox is not prohibited (referring to the presence of e-mail servers on the disputed domain name).
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world and in their enforcement. Do not hesitate to contact us.
(WIPO, Arbitration and Mediation Center, August 4, 2020, Case No. D2020-1543, Fundación Trinidad Alfonso Mocholí, Fundación de la Comunitat Valenciana v. Jack Zhang)
In a UDRP proceeding, the Complainant is required to establish that the disputed domain name was both registered and used in bad faith by the Respondent. To do so, it is imperative to establish the respondent’s knowledge of the Complainant’s rights.
The charity organisation, Fundacion Trinidad Alfonso Mocholi, filed a UDRP complaint because of the registration of the domain name <juanroig.com>. This association was founded by Mr. Juan Roig, who is particularly well known in Spain as a businessman. He presides over the largest supermarket chain in Spain and has already been received by the Spanish royal couple.
The association’s activities include programs to encourage the participation of children in sports activities. It carries out this activity under the name “Mecenazgo Deportivo Juan Roig”. It is also the owner of a semi-figurative Spanish trademark “MECENAZGO DEPORTIVO JUAN ROIG” registered on April 17, 2020 for goods and services in classes 16, 25 and 41.
The defendant in the action, located in the United States, is active in the purchase and sale of domain names. It reserved the domain name in question on October 27, 2014, before the registration of the plaintiff’s trademark. The disputed domain name does not refer to any site offering goods or services, but is offered for sale for an amount of 2,500 USD.
The expert admits the existence of a risk of confusion between the domain name and the subsequent trademark. Let us remind that the date of registration of the trademark is irrelevant for the analysis of the likelihood of confusion: only a “side-by-side” comparison is made. The expert takes into account, among other things, the fact that the expression “Mecenazgo Deportivo” is generic, since it means “Sports Sponsorship”.
The question of the legitimate interest of the defendant then arises.
The complainant states that it did not authorize the Respondent to reserve the disputed domain name. In return, the respondent argues that the practice of buying and reselling domain names is not illegitimate. He explains that a search on the LinkedIn site shows that there are more than 1200 members registered in Spain whose name is, or includes, “Juan Roig”. He argues that about 10% of the world’s population is on LinkedIn and infers that there are about 12,000 people in Spain who would be named Juan Roig. For him, the domain name is therefore composed of generic terms. This daring mathematical calculation is naturally not admitted by the expert, who notes the strong presence of people named Juan Roig in Spain or Latin America.
However, the expert believes that it would be necessary to demonstrate that the domain name is really used for its descriptive meaning in order to be able to refute a prima facie case of absence of legitimate interest. This was not the case here since the name is simply offered for sale, without any other use. The expert, therefore, asserts that the absence of legitimate interest is well demonstrated.
Furthermore, we may wonder about the descriptive use of a patronymic name, which seems complicated, unless a site is dedicated to statistics on the use of the name or to a specific person.
Regarding bad faith, the plaintiff argues that it was not a coincidence that the defendant registered the disputed domain name shortly after Mr. Juan Roig was ranked as the second wealthiest person in Spain.
The expert reminds that, in theory, bad faith will not be recognized when the trademark invoked in support of the complaint is subsequent to the registration of the disputed domain name. Except when it is proven that the defendant knew about the plaintiff and his emerging or future trademark rights.
The defendant purchases domain names in volume and could have been aware of the existence of the plaintiff if the domain name in question had been reserved as a result of its enter into the public domain (known as “drop catching”). But, this is a new registration. However, the expert notes that the defendant refused an offer to buy back the name, submitted by a third party, for the sum of 300 USD, which is almost 15 times higher than the price of a name reservation in <.com>. It is, therefore, clear that he wanted to make a more profitable profit from it.
Nevertheless, the defendant argues that he had never heard of the plaintiff or his trademark and that most of the publications that are supposed to support this fame are in Spanish language, which he does not speak.
The expert notes that some of these publications are in English and come from well-known newspapers such as the Wall Street Journal, but these publications are aimed at a limited audience, from the financial services sector.
The expert deduces that despite Mr. Juan Roig’s reputation, this is only demonstrated in Spain and he notes that his name is reasonably common among Spanish speakers.
The complaint is therefore dismissed.
Thus, the popularity of a public person is not sufficient to demonstrate the bad faith of the holder in the registration and use of a domain name. It is necessary to try to put oneself in the place of the reservist. If he comes from abroad, is he reasonably likely to know the person whose fame is being claimed?
WIPO, Arbitration and Mediation Center, June 15, 2020, No. D2020-0646, Wintrust Financial Corporation v. Domain Administrator, Se PrivacyGuardian.org / Name Redacted
WIPO’s case law databases have no fewer than 170 hits when there is a research for decisions against “Name Redacted”, a term used when experts decide not to include the name of the defendant in the complaint. This occurs when the defendant appears to have impersonated a third party and in order to protect his or her personal data.
Recently, in a case involving the domain name <wintrustexpertoptions.com>, an obvious case of cybersquatting where the defendant tried to make the public believe that they were related to Wintrust Financial Corporation, the expert made the decision not to mention the name of the defendant in the decision.
In fact, in the course of the proceedings, the Center received an e-mail from a third party regarding the identity of the Respondent, indicating that it was a case of identity theft. This communication was forwarded to the parties by the Center, which also contacted the defendant at another e-mail address, which had not been taken into account at the start of the proceedings, to ask them if they wished to file a response to the complaint, which they did not.
Even if the issue of impersonation is not proven with certainty, the expert, as a precaution, chooses not to expose the name of the defendant in the decision.
However, the expert includes an unpublished annex to the decision that includes the name of the defendant. An annex that the Center may forward to the Registrar. This technique has also been used in other decisions (V. ASOS plc. v. Name Redacted, WIPO, No. D2017-1520; Allen & Overy LLP v. Name Redacted, WIPO, D2019-1148).
In addition to the procedural adaptations that identity theft generates, this decision is an opportunity to remind the right holders to be vigilant with the naming charter established for the registration of domain names. For example, an inactive name reserved in the name of a subsidiary could appear legitimate. However, it could be a case of identity theft. This is why it is imperative, in order to protect the company, its managers and its customers, to establish the rules of good conduct regarding the reservation of domain names. In particular, the e-mail address used must be a generic address in the name of the company, such as domainames@nomdelentreprise.com, and a dedicated registrar must be designated.
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Written by Dreyfus28/01/2021 
The Council of the European Union makes observations and specific proposals in four areas: biotechnology, geographical indications, control of intellectual property policy and design rights enforcement. It welcomes (pt 8) the opinion G 3/19 issued on 14 May 2020 by the Enlarged Board of Appeal of the European Patent Office, in which it was concluded that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products obtained exclusively by means of such processes. It further welcomes (pt. 9) the fruitful discussions between the European Commission and the Member States on Directive 98/44/EC of the European Parliament and of the Council on the patentability of essentially biological processes for the production of plants or animals and of the products obtained by such processes, which have been conducted with the aim of achieving a deeper understanding of the Directive and the corresponding provisions of the European Patent Convention.
Since the advent of the General Data Protection Regulations (GDPR), it has become really difficult to obtain information about the registrant of a domain name. This obviously complicates the dialogue between trademark and domain name holders.
Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.
