The <.CN> Policy is ONLY applicable to <.CN> and <.中国> domain names that have been registered for less than three years.
This Policy applies to <.CN> and <.中国>domain names that are identical or confusingly similar, not only to a mark, but to any “name” in which the complainant has civil rights or interests (.CN Policy, article 8(a)), whereas the UDRP is limited to the protection of trademark rights.
It is sufficient for the complainant to prove that either registration or use of the disputed domain name is in bad faith, whereas the UDRP requires the complainant to prove both elements.
The appeal jurisdiction belongs to the Courts of China or the arbitration Chinese institution, and the proceedings language will be Chinese (unless otherwise agreed by the parties or determined by the Panel).
This adds to the over 75 other ccTLDs for which trademark owners can rely on WIPO’s dispute resolution services.
Since November 7, 2017, Thailand has officially become the 99th member of the Madrid Protocol, marking a major milestone in the expansion of the Madrid System, administered by the World Intellectual Property Organization (WIPO). This accession confirms the growing importance of this international mechanism in the global protection of trademarks.
Background and Thailand’s accession
The Madrid Protocol, in force since April 1996, allows applicants to protect a trademark in several countries through a single international application, filed with a member office and accompanied by a single set of fees. This centralized process is attractive due to its simplicity and efficiency.
Thailand deposited its instrument of accession in August 2017 during an official ceremony attended by government representatives. The accession entered into force on November 7, 2017, enabling, as of that date, trademark holders from Thailand or abroad to file an international application covering Thailand.
Advantages and challenges for applicants
Simplification and cost savings
Thanks to the Madrid System, applicants no longer need to file trademark applications country by country. A single procedure suffices to designate multiple jurisdictions, with one application and centralized fees.
Attractiveness for foreign businesses
Thailand’s accession enhances its appeal for foreign companies, which can now include Thailand in their international trademark portfolios through the Madrid System.
Regional strategy
This accession is part of a broader movement within ASEAN. With Thailand, eight of the ten ASEAN member states have joined the system a significant step toward regional harmonization in trademark protection.
Strategic perspectives in Asia
Thailand’s entry into the Madrid System represents a strategic opportunity for businesses targeting the Asian market and seeking to structure an international trademark protection strategy without multiplying individual national procedures.
Conclusion
Thailand’s accession to the Madrid Protocol, effective November 7, 2017, marks an important step in the expansion of the Madrid System. It provides tangible benefits in terms of simplicity, reduced costs, and broader geographic coverage for international applicants. This development also strengthens regional cohesion within ASEAN at a time when intellectual property protection is becoming a key competitive advantage.
Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.
Nathalie Dreyfus with the assistance of the entire Dreyfus team.
FAQ
1. Since when has Thailand been a member of the Madrid system?
Since November 7, 2017, following its official accession to the Madrid protocol.
2. What does the Madrid system offer in practice?
It allows applicants to file a trademark in multiple member states through a single international application and pay centralized fees.
3. Why is Thailand’s accession strategic?
It facilitates access to the Thai market through a single procedure and strengthens regional coverage within ASEAN.
4. How many members does the Madrid protocol have?
With Thailand’s accession, the system counted 99 member states as of its entry into force.
5. What perspectives does this accession offer?
It opens new opportunities for companies targeting Asian markets, notably by combining protection in Thailand with neighboring countries such as Cambodia, Vietnam, China, and Brunei.
Introduction : impartiality tested by social media
The rise of social media has profoundly transformed human interactions, blurring the lines between private life and professional obligations. In the judicial context, this evolution raises delicate questions about the neutrality and independence of judges. The decision of 5 January 2017 (No. 16-12.394) of the French Court of Cassation illustrates this issue by ruling on the legal qualification of the “friend” link on Facebook. The highest court emphasised that such a virtual link, often created without any significant interaction, cannot automatically be equated with a genuine friendship. This clarification marks an important step in adapting case law to the realities of the digital age.
The distinction between virtual and real friendship
Facebook “friend”: a symbolic link, not presumed to be close
The Court of Cassation held that the term “friend” as used on Facebook reflects the platform’s own terminology rather than a traditional social recognition. In many cases, such a connection results from algorithms, professional contacts, or weak ties, without genuine personal involvement. A virtual connection therefore does not, in itself, indicate emotional closeness or influence. This position ends the automatic conflation of digital and personal relationships. It also reminds us that the law must take into account the specific practices of each digital environment.
No automatic presumption of bias
The decision confirms that a “friend” link on a social network is not, on its own, sufficient grounds to recuse a judge. Without factual evidence of a personal relationship or partiality, bias cannot be established. This stance protects the freedom to use social media while maintaining a high evidentiary standard. It thus strikes a balance between safeguarding the image of justice and acknowledging common digital practices. The Court reaffirmed that only concrete evidence can justify challenging a judge’s impartiality.
Concrete elements that may demonstrate bias
Evidence required by case law
For a recusal request to succeed, it is essential to provide tangible evidence. Such evidence may include:
Frequent and personalized exchanges between the judge and the party.
Public expressions of support or positions taken in favor of one party.
Joint participation in events directly related to the case.
Precise, verifiable evidence directly linked to the dispute.
Elements ensuring that recusal is not used as a dilatory or strategic tool without any objective basis.
Probative value and legal requirements
The elements presented must demonstrate an objective appearance of bias, as it would be perceived by a reasonable observer. The criteria include:
Rejection of isolated or anecdotal evidence (for example, a single screenshot or a one-off connection).
The need to establish an overall context and a significant frequency of interactions.
Consideration of consistent indicators demonstrating an objective risk of bias.
A rigorous factual approach, excluding purely subjective interpretations.
Ensuring legal certainty and the stability of rendered decisions.
Scope of the decision on judges’ use of social media
Recognition of digital realities
In ruling this way, the Court acknowledges the widespread use of social media and the connections they generate. Digital relationships can exist without implying a real personal bond, and their mere existence does not inherently threaten impartiality. This recognition marks progress in adapting the law to the digital era.
Freedom of use framed by ethical prudence
However, the decision does not exempt judges from their ethical obligations. Their online presence must remain compatible with the requirements of neutrality and restraint. Any interaction likely to create an appearance of bias should be avoided to maintain public confidence in the judiciary.
Implications for public perception of justice
A reassuring decision for judicial neutrality
By requiring concrete proof of bias, the Court reinforces confidence in the independence of judges. This stance reassures that objective criteria, rather than mere appearances, guide the assessment of impartiality.
Risks of negative public perception
Nevertheless, part of the public, unfamiliar with legal nuances, may view these virtual links as a potential source of conflict of interest. This calls on judges and judicial institutions to educate the public about the real significance of such digital connections.
Conclusion
The decision of 5 January 2017 is a cornerstone in defining judicial impartiality in the digital age. It makes clear that the mere existence of a virtual link cannot undermine a judge’s neutrality, absent tangible proof of closeness or influence. This ruling helps to stabilise case law on recusal while providing a clear framework for legal practitioners.
Dreyfus Law firm is part of a global network of lawyers specialising in Intellectual Property.
Nathalie Dreyfus with the assistance of the entire Dreyfus team.
FAQ
Can a judge be Facebook friends with a party to a case ?
Yes, but this link alone does not justify recusal.
What evidence can prove bias ?
Frequent exchanges, public support, or direct involvement in the case.
Does the private nature of exchanges affect the analysis ?
No, only proof of a concrete relationship matters.
Does this rule apply to LinkedIn or Instagram ?
Yes, it applies to all social networks.
Can a judge be sanctioned for online activities ?
Yes, in cases of breach of neutrality or restraint obligations.
The term “trademark troll” refers to opportunistic actors who exploit trademark law for speculative or coercive purposes. This article examines the definition of trademark trolls, the dangers they represent, the means of protection against them, and the question of their potential strategic value.
Understanding trademark trolls
Definition and essential characteristics
A trademark troll files a mark without any genuine intention of use, with the aim of demanding royalties, blocking market access, or exerting legal pressure.
Origins: from patent trolling to trademark trolling
Inspired by practices in the field of patents, this misuse relies on the “first-to-file” principle. Trolls take advantage of companies’ delays or oversights to pre-empt their filings.
Why trademark trolls are dangerous
Legal and commercial risks
Such practices generate costly litigation, slow down innovation, and force businesses into unjustified financial concessions.
Concrete examples
Snapchat vs. 47/72 Inc.: the filing of “OH SNAP! CHAT” risked diverting Snapchat’s image.
Castel frères in China: fraudulent pre-registration of the name “Ka Si Te” led to penalties and market losses.
Apple-proview: Apple was forced to pay USD 60 million to secure the “iPad” trademark in China.
Opposition proceedings before INPI, EUIPO, or other trademark offices.
Revocation for non-use actions.
Recognition of bad faith, illustrated by the recent EUIPO decision invalidating a fraudulent “TESLA” filing.
In 2022, Tesla filed a cancellation action against the European trademark “TESLA,” registered by Capella Eood, a company associated with an individual known for “trademark trolling” practices. Tesla argued that Capella Eood employed speculative strategies to register trademarks in order to block other companies’ operations and extort financial settlements. The EUIPO’s Cancellation Division held that the mark had been filed in bad faith and declared it invalid.
While trolls act for speculative purposes, some defensive filings may be considered strategic, provided they rest on a genuine intention of use.
Regulatory responses and recent case law
Offices and courts are progressively reinforcing the fight against abusive practices. The Tesla/Capella Eood decision confirms Europe’s determination to sanction speculative filings.
Conclusion
Trademark trolls represent a growing threat for businesses. Only proactive protection strategies and swift legal responses allow companies to safeguard their intangible assets.
Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.
Nathalie Dreyfus with the assistance of the entire Dreyfus team.
FAQ
What is a trademark troll?
A trademark troll is a filing made without any real intention of use, solely to block or monetize rights.
What are the risks associated with trademark trolls?
They lead to costly litigation, delay market entry, and impose unjustified financial concessions.
How can a fraudulent filing be anticipated?
By filing trademarks early and implementing active monitoring systems.
What remedies are available in France and Europe?
Opposition proceedings, non-use cancellation actions, and claims based on bad faith.
Is revocation for non-use an effective tool?
Yes, it is an effective means of cancelling trademarks held by trolls.
Should start-ups fear trademark trolls as much as large corporations?
Yes, because their financial vulnerability and growing visibility make them particularly exposed.
What is the difference between a defensive filing and a troll filing?
A defensive filing aims to protect legitimate use, while a troll filing relies on abusive speculation.
The UDRP (Uniform Domain Name Dispute Resolution Policy) and the URS (Uniform Rapid Suspension System) are two essential extrajudicial mechanisms for effectively combating cybersquatting and abusive domain name registrations. Administered under the auspices of ICANN, these procedures provide trademark owners with a fast and targeted means of enforcing their rights globally, without resorting to lengthy and costly court actions.
However, the success of any action largely depends on the strategic choice of the arbitration and mediation center. Each institution has its own specific features in terms of procedural rules, timelines, costs, and the quality of its decisions. Given this diversity, it is essential to adopt a methodical approach, based on objective criteria and a careful analysis of your needs.
In this article, we share 10 key tips to help you make this crucial decision and optimise the protection of your digital assets.
Legal framework of UDRP and URS proceedings
Tip 1 : Determine whether your dispute requires a UDRP or a URS
Before initiating any action, it is essential to assess the nature of the infringement. UDRP is appropriate where the objective is the transfer or permanent deletion of the domain name, for instance, in cases of clear cybersquatting.URS, which is faster and less expensive, is limited to temporary suspension and applies only to new gTLDs. A strategic review of the facts, the commercial risk, and long-term objectives will ensure that you choose the most appropriate procedure and avoid wasting time on an unsuitable path.
Tip 2 : Review the Supplemental Rules of the selected center
Each accredited center applies the baseline rules defined by ICANN but adds “Supplemental Rules” that can influence the process. These set deadlines for filing, evidence formats, accepted languages, and proof requirements. A thorough review before filing allows you to anticipate constraints and prepare a compliant case file, reducing the risk of dismissal for procedural defects.
Choosing based on the disputed domain name
Tip 3 : Check the policy applicable to the domain extension
Not all extensions fall under UDRP or URS. Certain ccTLDs voluntarily adopt UDRP (e.g., .tv, .me), while URS applies only to new gTLDs such as .shop, .app, or .paris. Before starting a procedure, confirm the applicability of the rules with the registry of the extension. This is critical to avoid initiating an inapplicable action, which could waste costs and delay enforcement.
Tip 4 : Select a center adapted to the language and time zone
The language of the proceedings directly impacts speed and cost. Choosing a center that operates in your language, or in the registration agreement’s language, avoids high translation costs and reduces the risk of errors. Time zone alignment is also important, as it facilitates communication with panelists and administrative staff particularly for urgent exchanges or submission of additional evidence under tight deadlines.
Assessing costs, timelines, and procedural rules
Tip 5 : Balance budget, urgency, and expected outcome
Costs and timelines vary significantly. URS generally costs between USD 300 and 500 and can conclude in under 20 days, but only provides suspension. UDRP, which is more expensive (often several thousand euros), takes an average of 60–75 days and results in a transfer or permanent deletion. Your choice should be guided by whether you prioritise speed or the permanence of the remedy.
Tip 6 : Anticipate technical and administrative constraints
Some centers require specific electronic formats, online filing tools, or strict file size and format rules. Others still require physical submission of signed documents. Failing to anticipate these requirements can lead to delays or even dismissal of the complaint. Preparing for these in advance ensures smooth procedural progress.
Service quality and legal expertise
Tip 7 : Choose a center with a rich and consistent body of case law
Centers such as WIPO have extensive decision databases and research tools that consolidate international case law. This consistency is invaluable for predicting the likely outcome of a case and crafting a strong argument. A center with few precedents offers less predictability in decision-making trends.
Tip 8 : Opt for a center offering flexibility and adaptability
Some disputes require procedural flexibility, such as extensions of deadlines, acceptance of late-filed evidence, or hearings in an additional language. A center capable of tailoring its process to the complexity of your case can greatly improve your chances of success, especially in multi-respondent or cross-border matters.
Other decisive factors
Tip 9 : Consider the reputation and experience of the center
A center’s reputation is often tied to the quality of its panelists and the consistency of its rulings. An experienced center inspires trust among the parties and can also facilitate enforcement of decisions by registrars and registries. This institutional credibility is a key factor in legal security.
Tip 10 : Assess additional services and avenues for appeal
Some centers provide added value through technical assistance, practical guides, or an appeal mechanism in case of an adverse decision. Such features can be decisive, particularly under URS where an appeal process exists. Evaluating these advantages ensures you select a center offering more than just case management.
Conclusion
Selecting the right arbitration and mediation center for UDRP/URS proceedings is a strategic decision that must account for the nature of the dispute, the domain extension, timelines, costs, language, and the institution’s experience and reputation. Applying these ten tips will maximise your chances of success and secure the protection of your digital assets.
Dreyfus & associés assists clients at every stage of these proceedings, backed by its recognised expertise in Internet and domain name litigation.
The Court of Justice of the European Union (CJEU) has provided an essential clarification: retail services, when properly defined, can be protected as services falling under Class 35 of the Nice Classification. This recognition applies not only to the sale of goods but also to the sale of services, thereby expanding the scope of trademark protection for businesses operating in hybrid commercial environments. Understanding the legal framework, the conditions of admissibility, and the practical implications is crucial for any company wishing to secure its brand.
The legal framework of retail services in Class 35
Trademark law in the European Union was harmonised by Directive 2008/95/EC, later replaced by Directive (EU) 2015/2436. Class 35 of the Nice Classification covers services such as advertising, business management, and retail trade.
The long-debated question was whether the act of commercialising goods or services constituted an autonomous service eligible for trademark protection. The CJEU answered positively, provided that applications respect the requirement of clarity and precision set out in EU law.
The conditions of admissibility for retail services
To be accepted in Class 35, retail services must:
Specify the types of goods or services concerned (cosmetics, clothing, financial services, etc.);
Be presented as an activity distinct from the goods themselves;
Be drafted so that authorities and competitors can clearly understand the scope of protection claimed.
This requirement stems directly from the IP Translator judgment (CJEU, C-307/10), which imposes a precise and unequivocal wording of trademark specifications.
The Netto Marken-Discount ruling: scope and practical implications
In this case (10 july 2014 C-420/13), the CJEU confirmed that retail services cover both goods and services. These activities therefore fall within Class 35, as long as their wording is sufficiently precise.
Practical implication: a trademark registration can now protect both the physical sale of goods (e.g., supermarkets, fashion stores) and the sale of intangible services (e.g., online travel agencies, financial service platforms).
This reinforces the ability of brand owners to act against third parties seeking to exploit a trademark in a distribution context.
The boundary between goods and services in retail
The ruling clarifies a previously delicate distinction. Traditionally, goods fell within Classes 1 to 34, while services belonged to Classes 35 to 45. By recognising the retail of services, the CJEU acknowledges the evolution of commerce, where companies often act as both producers and service providers.
Example: a telecom operator markets mobile phones (goods) but also mobile subscription plans (services). Trademark protection must reflect this dual reality.
Jurisprudential developments in 2025
Since the 2014 ruling, EUIPO practice has evolved. In 2025, case law confirms that:
Specifications such as “retail services for pharmaceutical preparations” are admissible;
Overly broad wording such as “all retail services” is refused;
Courts require that evidence of use specifically relates to retail services, pursuant to Article 18 EUTMR.
The General Court has recently emphasised that these services must demonstrate a separate economic value to justify protection.
Anticipate international divergences, as some jurisdictions (United States, China) do not recognise retail services in the same way.
An integrated strategy is therefore essential to avoid gaps in brand protection.
Conclusion
The recognition of retail services in Class 35 represents a significant step forward for trademark protection. The CJEU’s approach reflects commercial developments and provides businesses with an effective tool to secure their activities, both for goods and for services.
Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Since the launch of ICANN’s New gTLD Program in 2012, the domain name landscape has undergone a profound transformation. This initiative has enabled the introduction of hundreds of new thematic, geographic, and sector-specific extensions (.shop, .paris, .app, .law, etc.), offering businesses enhanced opportunities for online positioning. However, this diversification has also brought increased risks of cybersquatting and brand infringement, compelling rights holders to adapt their protection strategies.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) remains the central, globally recognised mechanism for resolving disputes over domain names registered in bad faith, whether they involve legacy extensions (.com, .net) or the new gTLDs. Today, the UDRP must address a rising volume of disputes and increasingly varied contexts, requiring more tailored approaches.
This article provides a comprehensive overview of developments since the landmark Canyon.bike case in 2014, examines recent trends in UDRP disputes involving new extensions, and outlines strategic recommendations for trademark owners in 2025.
Context and scope of the UDRP for new extensions
Adopted by ICANN in 1999, the UDRP applies to all generic top-level domains (gTLDs), whether they are legacy extensions or part of the New gTLD Program. It allows a trademark owner to obtain the transfer or cancellation of a domain name where three cumulative conditions are met:
The domain name is identical or confusingly similar to the trademark;
The domain name holder has no rights or legitimate interests in respect of the domain name;
The domain name has been registered and is being used in bad faith.
This framework applies to all new extensions, thereby ensuring legal consistency on a global scale.
Evolution of new extensions since 2014
Growth and diversification of gTLDs
Since 2014, the number of available extensions has increased dramatically, now exceeding 1,200 delegated gTLDs. These fall into several categories:
Thematic extensions (.shop, .tech, .app) targeting specific industries;
Geographic extensions (.paris, .london) highlighting local presence;
Community or specialised extensions (.law, .bank), often subject to strict eligibility requirements.
Trends and most-used extensions
Some new extensions have quickly gained prominence due to their universal appeal and marketing potential, such as .xyz, .online, and .shop. These have also become prime targets for cybersquatters, necessitating enhanced monitoring measures.
Case law and landmark decisions
The Canyon.bike case (2014)
This decision remains the first known UDRP case involving a new extension. It confirmed that the extension itself does not influence the assessment of similarity between the trademark and the domain name: the decisive element is the string to the left of the dot.
Recent jurisprudential developments
Since 2014, numerous cases have involved new extensions. UDRP panels apply the same criteria to recent gTLDs as to legacy ones, while considering the specific context of certain extensions, particularly when the extension reinforces the association with the trademark’s industry sector. Decisions also show heightened vigilance toward multiple registrations across different extensions targeting the same brand.
Issues and strategies for trademark owners
Monitoring and anticipation
The proliferation of extensions makes it essential to implement automated and targeted monitoring of trademark terms across all relevant extensions.
Selecting the appropriate procedures
Depending on the case, several options are available:
UDRP: to obtain permanent transfer or cancellation;
URS (Uniform Rapid Suspension): for clear-cut cases of cybersquatting, enabling swift suspension;
Local procedures: such as Syreli for .fr, when the domain name falls under a ccTLD.
Building strong cases
The success of a complaint hinges on demonstrating all three UDRP criteria with clear, tangible evidence of the trademark’s reputation and the respondent’s bad faith (e.g., multiple registrations, deceptive use, redirection to competitor websites).
Conclusion
New extensions offer businesses unprecedented opportunities for online visibility but also open new fronts for rights infringements. The UDRP remains as relevant and effective as ever, provided it is integrated into a comprehensive strategy combining monitoring, rapid action, and careful selection of dispute resolution procedures.
Dreyfus & Associés assists clients in protecting and defending their rights across all extensions, in partnership with a global network of intellectual property law specialists.
Nathalie Dreyfus, with the support of the entire Dreyfus team
FAQ
What is a new gTLD?
A generic top-level domain introduced after 2012, such as .shop, .paris, or .app, expanding the range of available domain name choices.
Does the UDRP apply to new extensions?
Yes. It covers all ICANN-approved gTLDs, whether legacy or new.
Should all extensions be monitored?
It is advisable to target the extensions most relevant to your sector and market to optimise monitoring costs and effectiveness.
Can multiple domain names be challenged in a single procedure?
Yes, if they are registered to the same holder and circumstances justify joint action.
How can a respondent’s bad faith be proven?
Through evidence such as the trademark’s reputation, redirection to a competitor’s site, or offering the domain for sale at an excessive price.
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Written by Nathalie Dreyfus09/08/2019 
