In the context of ICANN’s new Registrar Accreditation Agreement (RAA), which took effect from 1st January 2014, domain name owners of gTLDs should expect to receive the following 3 emails:
An e-mail requesting confirmation of the e-mail address of the rights’ holder
An e-mail asking for the WHOIS information to be updated if necessary,
An e-mail notifying the expiration of the domain name sent 15 days before the expiry date whether or not the domain name has been renewed.
The e-mail to confirm the e-mail address of the rights’ holder is a mandatory requirement that must be met within 15 days of receipt.
In the event of failure to provide confirmation, the domain name will be suspended but would however be reactivated once confirmation is received.
In a ruling of June 21, 2013 (1), the Paris Court of Appeal rejected a counterfeiting action filed by the SPPF (the French collecting society for record labels’ neighboring rights in sound recordings) against Youtube for allowing internet users to post counterfeit videos.
In 2008 Youtube had withdrawn over 200 contentious videos from its platform following a cease-and-desist letter from the SPPF specifying that the rights holders had not given their consent. Since a large number of these videos were subsequently posted several months later, the SPPF filed for an action against Youtube and Google.
The Paris Court of Appeal ruled that only the judicial authority has the power to impose on hosting service providers a duty to temporary and targeted surveillance in accordance with article 6-I-7 paragraph 2 of the law to generate confidence in the digital economy (LCEN).
It is worth recalling that as a result of combining sections of articles 6-I-2 and 6-I-5 of the LCEN legislation, hosting service providers are not subject to any general obligation to monitor the data stored or any general obligation to research the facts or circumstances arising from illicit activities, . Besides, the withdrawing of content by a host site cannot be undertaken without prior notice.
The Paris Court of Appeal confirmed the lack of obligation on the part of hosting service providers to make a permanent removal, and restated the requirement for a further notification when withdrawn contents are re-posted. In other words, every new posting containing illicit content requires a new withdrawal notification.
This ruling follows the precedent set by the High Court (Cour de Cassation) in three decisions of July 12, 2012 (2), in which it refused to enforce an obligation for permanent withdrawal, considered to be a duty of general surveillance not covered by the terms of the LCEN legislation. When illicit content is posted once again by a different internet user, it should be considered as a new case requiring a further notification in line with the requirements of article L6-5 LCEN. To support the duty to permanent withdrawal would imply the modification of LCEN article 6 and would require an overhaul of e-commerce guidelines.
As a result, it is even more important today to monitor social networks in order to respond appropriately.
(1) Paris Court of Appeal, pole 5 Chamber 2, decision of June 21 3013, SPPF versus American company YOUTUBE LLC, GOOGLE France and GOOGLE Ireland ltd.
(2) Decisions of July 12 2012, no 11-13-666; no 11-15.165 and 11-15.188; no 11-13.669
On April 2013, the British Virgin Islands (BVI) passed a new Trade Marks Act in order to bring to date the 19th century country’s trademark.
Among the features of the new law:
– the classification system will be based on the Nice Classification unless the Financial Services Commission decides to use another one,
– only a registered trademark agent can apply for the registration of a trademark,
– it will be possible to claim priority for a trademark already registered in a Paris Convention country or a World Trade Organization member,
– once a trademark is registered, the renewal period will be 10 years. However, if a trademark has been registered before commencement of the Act, its 7-year renewal period will be unchanged until expiration, and
– for marks not registered in the BVI, use of ® or the word “registered” without being able to show a valid registered certificate from another jurisdiction is subject to a fine.
The open auction of previously reserved domain names has already generated over 50 million yuan, or more than 8 million dollars.
The auction of domain GAME.CN produced the highest offer of nearly 3 million yuan after 700 bids.
In second place was domain name GW.CN which is the Chinese abbreviation for “gou wu” or “guo wang“, meaning “shopping” or “national network”. Bids climbed to over 2 million yuan.
The domain LB.CN came next with over 1 million yuan. This can stand for “lao ban“, “libao” or “lian bang” which mean respectively “boss”, “gift” and “federal”.
The fourth best auction result was for the domain name CM.CN, much sought-after by investors and Chinese “domainers” and which brought in over 1 million yuan.
Thanks to these auctions the funds accumulated – after tax deductions – will be given to charity.
With effect from 8 January 2014, residents, companies and organizations based in Iceland, Lichtenstein and Norway can register .eu domain names.
This decision by the European Commission is based on regulation EC 733/2002 of the European Parliament and Council which foresaw the extension of .eu to the whole of the EEA.
The registration policy and the Whois policy, as well as the Terms and Conditions with regards to privacy were also updated.
After leading a study concerning the likelihood and impact of collisions between applied-for new gTLD strings and non-delegated TLDs, ICANN suggests to the community mitigation measures in order to avoid collisions.
Those problems may occur when local top-level domains in private namespace reach the public DNS while they already exist or when certificate authorities issue X.509 certificates for domain names that are not resolvable in the public DNS.
The study emphasises three categories of strings by the potential risk of name space collision: low risk, uncalculated risk and high risk. For each one of them, the program offers a determined and made to measure management process.
In this way,
for low risk gTLD strings, the study proposes proceeding with contracting and delegation of these strings but recommending additional mitigation measures without impacting their timeline for delegation,
for uncalculated risk gTLD strings, the delivery date should be extended by 3 to 6 months, and
for high risk strings which are .home and .corp, the process will be delayed until those strings goes to low risk category.
The new gTLD string delegation process is long and delicate. At this stage, all these steps are proposals only and opened to the Internet community’s comments.
The report published by European Commission for the year 2012 presents statistical information on the number of detentions and other customs actions over the past year(1).
The number of individual articles detained are down over 65%. Indeed 114,772,812 articles have been detained in 2001 to 39,917,445 in 2012. However, regarding instances of imports, the results have remained quite stable (91,245 detentions in 2011 to 90,473 in 2012).
This shift is due to the availability of goods online which infringe intellectual property rights. The goods arrive to Europe generally through post and couriers.
The articles come for the most part from China for CD, DVD and tobacco, Marocco for foodstuffs and Bulgaria for packaging materials.
In 90% of the cases, detained goods were destroyed either after the owner of the goods and the right holder agreed on destruction or after the right holder initiated a court action. The report says also that 8% of detentions have been released because the right owner didn’t react to a notification or because the goods were genuine.
It is important to set up a customs surveillance and seizures. Our law firm can advice and assist you to set up a monitoring of your company trademark at customs level in France, as well as in the European Union.
Dreyfus has been nominated “Boutique IP Law Firm of the Year” (1) in “Acquisition International” magazine’s “Legal Awards 2013”.
Nathalie Dreyfus explains in an interview that the firm’s expertise in the protection and enforcement of trademarks on the internet has played a key role in this recognition.
Since 10 years, Dreyfus routinely handles litigations and has acquired the necessary experience to anticipate the outcomes of disputes.
Dreyfus also points out that there are some trends in the field of intellectual property. Examples would include not only the opportunity to file – and protect – an international trademark in many countries in one shot, but also “the interdependence between intellectual property and the digital economy” with the launch of new gTLDs which will accelerate the need “to adjust the legal strategies of companies relating to the presence of their trademarks on the internet.”
Dreyfus has also been described as “excellent” in the rankings of the best IP law firms of “Décideurs” magazine (2). We find out what serves to distinguish the firm from the rest: a stronger “relationship between the protection of intellectual property and new technologies, especially concerning domain names” and its active involvement “with arbitration centers and with ICANN in particular.”
In a recent decision (1), the Trademark Trial and Appeal Board (TTAB) sustained an opposition requesting the rejection of the trademark EPI-KEY based on a likelihood of confusion with the trademark EPIPEN.
The TTAB is a body within the United States Patent and Trademark Office (USPTO) responsible for hearing and deciding certain kinds of cases involving trademarks. More specifically, the Trademark Trial and Appeal Board decides adversary proceedings involving notably oppositions to the registration of trademarks and petitions to cancel trademark registrations.
The main point to emphasize in this decision is the rejection of the applicant’s argument that any risk of confusion can be avoided by the need that the medicines be prescribed by a doctor.
Both marks were used for medical treatment of allergies with epinephrine. The Board found plausible that the patient requests the wrong device to his doctor thinking it was the other one. Patients and even physicians can also have the mistaken belief that both medicines are manufactured by the same company.
So, even if the products are prescribed by professional intermediaries there may still be a risk of confusion between two marks.
(1) Mylan, Inc. v. Beaufort County Allergy, opposition No. 91195868 (USPTO TTAB June 19, 2013)
AFNIC, the French domain name registry, will accept soon domain names with one and two characters, following its German and English counterpart’s footsteps. The idea was refused for a long time because of possible confusions with country extensions published by the International Organization for Standardization (ISO). However, there are few reasons to stop such registrations.
We can find indeed some restrictions leading to confusions, such as existing extensions in the AFNIC registry (<fr.fr>) and country or second level extensions (<uk.fr>, <co.fr>). Nevertheless, there isn’t any problem registering domain names like <a.fr> or <2ü.fr>.
Moreover, short domain names are popular. They are in limited number and easy to remember. Hence, their acquisition is not easy and the competition is tough.
Contrary to the German registry which offered in 2009 a procedure to best and quicker bidders, the English system processed by stages, a fairer method.
AFNIC plans to offer a procedure available by the majority of internet users and may propose different ways of release, such as « first come, first served » or an auction system.
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Written by Dreyfus23/01/2014 
In the context of ICANN’s new Registrar Accreditation Agreement (RAA), which took effect from 1st January 2014, domain name owners of gTLDs should expect to receive the following 3 emails:
