Nathalie Dreyfus

On January 12th, 2012, ICANN (the InternView Postet Corporation for Assigned Names and Numbers) initiated the creation of new extensions (also called gTLD for generic Top-Level Domain), which were available for registration as of 2014.

With the arrival of the new gTLDs, geographical indications were in a difficult position and their protection was not always strictly respected. It has been noted in several cases that there were shortcomings in respect of their protection and that it was difficult for experts to find a solution to any possible dispute between domain names and geographical indications.

The arrival of new gTLDs and the surrounding uncertainties

Several challenges have emerged following the arrival of new gTLDs: these are outlined by AFNIC’s Issue Paper no 11. For these extensions to create an impact and meet their objective (to make websites easily identifiable without wading through search engines), they must be used. Yet to be used, they must be known and internet users must take ownership and become familiar with them. For this to happen, it is necessary that their holders promote them through effective advertising campaigns; for example, the very succesfull communication campaign that the city of Paris launched at the end of 2014 for <.paris>. Within two hours after the opening of registration, more than 6000 domain names had already been registered.

If the new extensions programme proves to be a success and combines, on the 1^st April 2016, 16 million registered domain names with new gTLDs, time will tell if these domain names will be renewed, used and owned by Internet users.Hovere, the new extensions remain problematic in terms of geographical indications: what is going to happen when a new extension bears the name of a geographical inidication or has a name similar to it? Are there specific ICANN rules to protect these geographical indications and the usage that the owner can make of it?The definition of a geographical indication

WIPO (World Intellectual Property Organization) defines geographical indications as “a sign used on products that have specific geographical origin and possess qualities or a reputation that are due to that origin.”

The term is also defined by Article 22(1) of the TRIPS ( Agreement on Trade-Related Aspects of Intellectual Property Rights):

“Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. The geographical indication will identify a specific place or region of production which determines the characteristics of the product originating from this location.”

The quality and reputation of the  the product must be attributed to that place. Geographical indications should be protected because they guarantee the origin and quality of the product which will provide reliable information to consumers who will trust it.

The difference between geographical indication appellation of origin and trademarks

We must distinguish geographical indication and both appellations of origin and trademarks:

• Appellation of origin: if the appellation of origin also implies a qualitative link between the relevant product and its place of origin, the difference is related to the place of origin which is predominant over the geographical indication. Thus, the quality or characteristics of a product protected by an appellation of origin due exclusively or essentially to the geographical origin when a single criterion (the quality or reputation) would suffice geographical indication.
• Geographical indication is not a trademark: the latter is “a sign capable of distinguishing the goods or services of one entreprise from those of other enterprises”. As a protected intellectual property right, a trademark allows the trademark holder to prevent others from using it. The difference between geographical indication and a trademark is found under the regime of protection. Indeed, trademarks are afforded better protection than geographical indications. It is easier for a trademark holder to claim protection over the brand than to claim protection for a geographical indication because of a lack of uniformity between the legal rules.

However, if the definitions contain more or less the same elements, there is no harmonization in the laws and several treaties administered by WIPO such as the Paris Convention or the Lison and Madrid Agreements. Violations concerning geographical indications and domain names are handled case by case (for reasons discussed later in this article) which makes it difficult for experts to assess in which cases there has been a violation or not.

The example of <.wine> and <.vin>

One of the best known examples which portrays the difficulties encountered in seeking reconciliation between domain names and geographical indications is the matter of <.wine> and <.vin>.

In June 2012, new gTLDs <.wine> and <.vin > became available for registration with ICANN. For < .wine >, three companies applied to become registry operators, including Donuts, Inc. which also applied for <.vin>. However, most wines produced in Europe are protected by a geographical indication or an appellation of origin. Several organizations, committees or governments were concerned about this future availability of these new gTLDs fearing that the future registry operator did not respect geographical indications and allowed anyone to register a domain name with <.wine> or <.vin>.

An intergovernmental commission including government officials and representatives of international organizations was then established by ICANN. The GAC (Governmental Advisory Committee) commented on the issue but its members had different views. In September 2013, a decision was made (despite the diverging opinions of some GAC members) requiring that the normal procedure of ICANN  be followed: that is, “first come, first served” but also to negotiate with the future registry operators of <.wine> and <.vin>.

ICANN sought the advice of Jérôme Passa, a law professor at the Université Pantheon-Assas. In his analysis, he noted that there is no existing rule of law relating to geographical indications which would require ICANN to reject applications nor to accept them under certain conditions.

The advice of the GAC dated September 9, 2013 was accepted by the NGPC (New gTLD Program Comittee) on March 22, 2014: the applications for <.wine> and <.vin> should proceed with the normal evaluation process of the ICANN.

However on March 27^th, 2014, the GAC issued a  notice advising on the importance for interested candidates and applicants to continue their negotiations to reach an agreement on the subject. For the GAC, it is vital to add warranties in order to combat fraud in respect of geographical indications and to protect customers.

On April 4^th, 2014, the NGPC issued four resolutions including an extension of the deadline of 60 days for the decision relating to the applications,  encouraging parties to negotiate during this period.

In November 2014, Donuts, Inc. won the auctions for the <.wine> and <.vin> gTLDs, despite the objections of the wine industries and of the  Commission of the European Union (EU). However following a complaint from the EU and wine associations against ICANN’s delegation of <.wine> and <.vin>, the stakeholders were able to reach a private agreement, the terms of which have not been disclosed.

A Sunrise Period of two months started at the end of 2015, during which more than 1,300 trademark owners registered the domain names <.wine> and <.vin> and set up websites like <sherry.wine> or  <champagne.vin> which focused on sales, marketing and knowledge relating to wine. On January 20^th, 2016, anyone was able to register these gTLDs.

It is to be noted that this case is significant because of ICANN’s stance on geographical indications, the violations of which need to be evaluated on a case by case basis:

• Firstly, by reference to a given geographical indication which will make it possible to identify the applicable rule of law;
• Secondly, by reference to the incriminating act: only certain acts will fall under this category depending on the identity of the perpetrator, the incriminating products used and the context within which the acts are perpetrated.

Ensuring that geographical indications are not being infringed will not be ICANN’s duty but that of the registrant of <.wine> and <.vin> (in this case, Donuts, Inc.) who has the duty to ascertain that the rules of law relating to geographical indications are respected.

The UDRP procedure and geographical indications

UDRP is a procedure which has been established for over a decade to combat cybersquatting. Cybersquatting occurs when a person, in bad faith or in order to make a profit, registers a domain name similar to that of a trademark to confuse internet users. The perpetrator of cybersquatting thus aims at benefiting from the reputation of a well-known trademark, allowing for the sale of products to confused customers who will think that they are using the official website of the trademark or for the reselling of the domain name at cost price to the trademark holder.

But a UDRP procedure has a limited application: it is open only to an applicant that can prove to hold the trademark rights. Thus, in principle, business names, geographical indications and personality rights do not fall within the scope of the UDRP procedure.

The only means for an applicant to win a UDRP procedure with regard to a geographical indication is to establish a link between the geographical indication and a registered trademark. However, it is very difficult to establish such a link and therefore to win a case within the context of an UDRP procedure.

The case of “champagne”

Two cases brought under scrutiny the term “Champagne”: as a domain name and appellation of origin.

On February 9^th, 2008, the Tribunal de Grande Instance in Paris rendered its decision involving  a claim by the CIVC (Comité Interprofessionnel du Vin de Champagne) regarding the domain name <champagne.ch>, against a Swiss company and its French affiliate who distribute? biscuits under the name “Champagne” which the company had registered and which was available in France. The CIVC also requested the cancellation of the domain name. Indeed, the company chose this name because it matched the name of the Swiss canton of Vaud where it was indeed located.

However, the Treaty of May 14, 1974 between Switzerland and France on the protection of indications of source, appellations of origin and other geographic names specifies that homonyms are allowed only if they do not create confusion, which was not the case in this instance. The Tribunal de Grande Instance of Paris then decided that, in considering the products and the domain name, consumers were indeed being misled. The Tribunal also ordered the cancellation of the domain name.

However in 2011, the outcome of WIPO Case No. DCO2011-0026 on the domain name <champagne.co >, was different. The case opposed CIVC against the registrant for the domain name, <champagne.co>. The CIVC’s principal objective is to defend, preserve and promote the interests of the wines sold under the appellation of origin, “Champagne”. However, the CIVC failed to establish that its rights on the appellation of origin constituted an unregistered trademark which would have allowed it to assert its rights for purposes of the UDRP. According to Article 4(a) of the UDRP, a complainant must prove that the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The expert witness was not convinced by the  arguments of CIVC which evoked a mark that was unregistered but well-known. The CIVC had not sufficiently established the link between the appellation of origin and the trademark: the expert thus authorized the use of the domain name <champagne.co>.

The case of “Parma-schinen.com”

The Consortium of Certified Producers of Parma Ham owns several trademark registrations for the signs “PARMA”, “PROSCIUTTO DI PARMA” and “PARMA HAM”. A German individual registered the domain name <parma-schinken.com>. However, the term “schinken” is the translation of “ham” in German. Considering that “Parma” is protected by an appellation of origin was irrelevant to the UDRP, the expert witness took into account the registered marks to decide on the existing confusion between the domain name and the said trademarks, given that there was also a translation of the mark to be acknowledged.

It is therefore possible to revoke a domain name in the context of UDRP proceedings where an appellation of origin or a geographical indication is involved but only if there is a registered trademark which may be taken into account by the expert witness during the proceedings.

Should we expand the scope of the UDRP procedure to cover geographical indications?

In order for an expert witness to grant the revocation or transfer of a domain name in a UDRP proceeding, the main requirement is the existence of a justification of a trademark right and the applicant has to bear the burden of proof. Thus, the UDRP procedure applies only to trademarks and an applicant who has not registered a trademark in relation to a geographical indication has no other choice than to resort to legal proceedings by way of an action for unfair competition, an action for parasitism or an action for deceptive business practices.

Ultimately, would it not be wiser to extend the scope of the UDRP procedure to geographical indications and appellations of origin that have a significant economic and cultural value?

If this procedure works correctly for trademarks, it is also possible to think that it would be the case also for geographical indications.

Proposals to this effect were made by the Standing Committee on Trademarks, Industrial Designs of and Geographical Indications (SCT) at its thirty-first session in Geneva (17-21 March 2014). The authors of the proposal expressed their concerns with regard to the existing gaps in the UDRP procedure which constitute an “obstacle for safeguarding the legitimate interests of rights holders”.

In fact, to accept that registrants use domain names enjoying a geographical indication cause prejudice to the domain name system as a whole. The system is mainly based on the trust of internet users and if they are deceived by such practices, the entire system may suffer.

The only difficulty concerning geographical indications is the absence of an official registry which does exists for trademarks. But this difficulty can be resolved if a registry is created, to the extent that it would be possible to enhance the UDRP procedure so that complaints of violation of the protection of an appellation of origin or a geographical indication are accepted.

For now however, amending the UDRP procedure to  integrate geographical indications does not form part of the agenda. This matter will have to be followed…

An ICANN working group has been given the task of analyzing the trademark protection mechanisms in light of its new gTLDs program. The group will need to improve these mechanisms in order to provide better protection for trademark holders.

A need for change

Needless to say, ICANN has already published requirements on trademark rights protection mechanisms.

This time however, a review of all mechanisms seems inevitable given they were created at the time of the previous round of the gTLDs and are therefore, tested since only a few yers.

The URS procedure (Uniform Rapid Suspension),  which aims to protect registered trademarks, has also been criticized. The procedure provides trademark holders with a quicker and less expensive protection system but has proven in practice, to be somewhat unsuccessful in protecting trademark holders. Through URS, trademark holders can forbid the unlawful use of a domain name usurping their brand. However, they have no control on a potential transfer of the litigious domain name..

Different rights protection mechanisms

The working group, which consists of approximately two hundred people, will review the different mechanisms, including the URS system.

The group will also review the Trademark Clearinghouse system. Opened on March 26, 2013, this particular mechanism allows trademark holders to input data related to their trademark into a global database, both before and during the launch of new gTLDs. It then notifies trademark holders as soon as an identical domain name carrying a new extension is registered by a third party.

Furthermore, the working group will take into consideration the (Uniform Dispute Resolution Policy), which deals with disputes relating to domain names. UDRP provides an alternative dispute resolution procedure for trademark holders when a domain name uses their trademark. The issue here is about finding user-friendly procedures for trademark holders.

Wrongdoers have swindled domain name holders by selling false domain name protection certificates pretending to represent ICANN.

A well-run organisation

The swindlers implemented a well-thought out procedure in order to trick domain name holders. They made false threats aiming in order to scare domain name holders and then offered paid protection services.

They also usurped ICANN’s logo which made the fake certificates look authentic.

ICANN has never delivered certificates to domain name holders and has never directly charged domain name holders, making this practice all the more fraudulent. In fact, the application to register a domain name is always made through an ICANN-accredited registrar.

The role of ICANN

ICANN’s mission is to guararantee stable Internet access to Web users around the world. Since its creation in 1998, ICANN allows for e-mail addresses and websites to run smoothly by acting as a central entity assigning names on the Internet. ICANN’s authority is worldwide and its decisions are binding in all countries.

This attempt of fraud raises the question of the powers of ICANN. This new scam could lead to Internet users questioning the authority of   ICANN and its protection services.

A novelty in the field of Russian intellectual property law: as of June 1st, 2016, an applicant for an infringement action is required to submit a letter of formal notice to the defendant and wait 30 days before initiating legal proceedings. Thus, an infringement action must always begin with an attempt to resolve the dispute amicably.

The requirement applies to civil cases except for a limited number of instances such as for example, cancellation actions on the grounds of non-use.

Prior to this amendment, sending a letter of formal notice before filing an infringement claim was optional. As of June 1^st however, if an applicant files an infringement claim before a judge without having submitted a letter of formal notice, or if the applicant fails to wait 30 days after the issuance of such a notice, the action will be considered inadmissible.

The reform implies a development in the  evidence to be produced by the parties during proceedings. Indeed, the parties will have to produce evidence of their amicable discussions in court. It is also worth noting that following the wording of the law, the applicant will most likely have to enclose a copy of the accompanying letter sent by registered mail, in order to confirm that the letter of formal notice was actually sent.

The new legislation does not require the applicant to produce evidence that the defendant has received the letter. However, in practice, we can expect that in order to delay the proceedings, the defendant will argue that he/she did not receive the formal notice. In such a case, the defendant would not have had the opportunity to remedy the infringement prior to any proceedings and the out-of-court phase would not been complied with.

This reform necessarily implies changes in the trademarks and domain name defence strategy in the Russian Federation.

It will be interesting to follow the case law pertaining to these novelties and their implementation.

By allowing a user access to a social media network, he or she accepts all the provisions outlined in the Terms of Use without actually being in a position to question any of these. It is therefore legitimate to question the binding force of these rules: what is the validity of these terms under French law?

What is the legal nature of the terms of use of social media networks ?

“Terms of use”, fundamentally, is a contractual document laying down the rules of the social media network. They are binding upon the social media network and the user and as such, article 1194 of the French Civil Code applies:: “Agreements bind not only as to what is therein expressed, but also as to all the consequences that equity, usage, or law impose upon the obligation according to its nature”.

However, the terms are first and foremost an adhesion contract in that the user is not in a position to actually negotiate the terms of the contract. Therefore, while the terms of social media networks are legally binding contracts, they are hard to access and contain legally questionable provisions: their binding force is therefore open to debate.

Are the terms of use of social media networks enforceable?

Terms of use are often criticized for being difficult to access. The terms are often reproduced on documents separate from the contract and it is not always easy to prove that the contracting party was aware and accepted them.

For some terms, relating to the protection of personal data, access is even more tenuous since the user needs to click on a link within the terms in order to review the relevant rules or policies.

Furthermore, the terms of social media networks are regularly changed and users are not explicitly informed of modifications.

Are the terms of use of social media networks lawful ?

Social media networks are aware of content posted by a user and the terms implement licences allowing them to use that content. A judgment of the Paris Court of first instance (“Tribunal de Grande Instance de Paris”) on May 29, 2012, TF1 vs. YouTube, was an opportunity for judges to indicate that the license agreement in YouTube’s Terms of Use was questionable under copyright law, since it failed to set out limits in terms of time and space to the free transfer of rights.

Can some clauses of the terms of social media networks be regarded as unfair under French law?

The clauses, as presented, cause a significant imbalance between the rights and obligations of the parties. The general public and consumer rights groups therefore tend to condemn these clauses, which they define as unfair.

The majority of the clauses in question deal with the protection of privacy and personal data. The Unfair Terms Commission, in its recommendation No. 2014-02 of November 7, 2014 recommends the removal of terms relating to the legibility of the contract, the formation of the contract, personal data, intellectual property rights or the modification of the terms as these create a significant imbalance between the rights and obligations of the parties to the contract.

Until recently, it was not possible in France to file a class action. The Hamon Act of March 17, 2014, introduced the class action in the Consumer Code, thus enabling consumer associations to take legal action to obtain compensation for individual harm where a social media network [sic] has failed to comply with its legal or contractual obligations.

Social media network terms of use and conflicts of jurisdiction

The terms of use of social media networks are now being construed in conjunction with rules regarding conflict of law and jurisdiction. In 2012, the Pau Court of Appeal clarified the applicability of terls in the framework of an action brought against Facebook. A Facebook user objected to a clause of the terms of use conferring jurisdiction to the California courts. The judges rejected the application, ruling that the clause was written in English and the font was too small [sic]. This judgment confirms that the parties to a contract can decide on the competent jurisdiction.

In a more recent decision of March 5, 2015, judges of the Paris Court of first instance (“Tribunal de Grande Instance de Paris”) considered that they had jurisdiction over the validity of the jurisdiction clause contained in the Facebook terms of use. The Court then declared the jurisdiction clause invalid and unenforceable on the grounds of the unfair nature of the clause. The Court of appeal, in its judgment of February 12, 2016, upheld the decision. Consequently, the Paris Court of first instance has jurisdiction over the dispute between the social media network and a Facebook user whose account had been disabled (after posting a photo of a famous painting by Courbet called “L’origine du monde“.)

The question of the scope of application of the solution arises following the publication of the Ordinance No. 2016-131 of February 10, 2016 reforming the French Civil Code. Article 1171 of the Civil Code, which will come into effect on October 1, 2016, states that “in an adhesion contract, any clause which generates a significant imbalance between the rights and obligations of the parties is deemed to be void.” Professionals will therefore be able to invoke this article which gives them a wider scope of defense and places them on the same level as non-professionals and consumers who are protected against unfair terms according to the Article L212-1 of the French Consumer Code.

The DGCCRF (French Consumer Authority) has also looked at the case of Facebook. In a statement on February 9, 2016, the Authority declared having examined the Facebook terms of use and having found several clauses to be abusive: in particular, the clause authorising Facebook to remove, at its own discretion, content or information published on the network by a user and the clause in which Facebook reserves the right to unilaterally change the privacy policy without informing the user. The DGCCRF has publicly urged Facebook to remove these clauses which are considered unfair.

On January 26th, 2016, Facebook was served a formal notice by the CNIL (French Data Protection Authority) asking the company respect the Data Protection Act of January 6, 1978 in the area of collection and use of data. The social media network was accused of monitoring the navigation of users on other websites without their knowledge, even if such users are not in possession of a Facebook account. Since then, no information has been published neither by the CNIL nor by Facebook on the consequences of this notice. It is definitely a case to watch closely.

One can only congratulate French judges for having stood up to social media network providers and ensuring they respect the fundamental values of French law.

Dreyfus recently held a seminar on trademarks and domain names in Iran as international brands look toward  the country for opportunities. Nathalie Dreyfus reveals what was discussed, and how brands can benefit.

Click here to read the IPPro The Internet’s feature on the event.

For further information on the event or future events, please contact our team.

Nathalie Dreyfus, founder of Dreyfus, took part in the ERA Academy of Law conference on “The Protection of Geographical Indications”. During the conference, Ms. Dreyfus provided participants with an overview of the legal challenges present in the area of domain names and geographical indications.

To view an extract of the video presentation, please click here.

For further information or to contact Ms. Dreyfus, please click here. 

The hashtag, by its insertion before an expression or a word allowing contents to be classified by theme, has in a few years, become an essential tool for social networks, for private individuals as well as companies through their trademarks. The daily impact of this new communication tool in our connected society is undeniable. It is a direct channel of communication and offers a real proximity with the client.

It is interesting to observe that hashtags can be given the same definition as a trademark as per the Code of Intellectual Property as well as the European directive 2008/95/EC and must therefore be protected in the same way, provided however that registration is sought and that the established requirements are met. In France, Article L.711-1 of the Code of Intellectual Property states that: “The following may constitute [such] sign: a) All kinds of designations such as: words, word groupings, last names and geographical names, pen names, letters, numbers, abbreviations (…)”. A hashtag could therefore be protected under trademark law if it meets the same requirements applicable for trademarks, namely distinctiveness, availability and lawfulness.

Formal registration definitely allows a hashtag to be protected against any unlawful reproduction or imitation. However, it appears somewhat incongruous that the holder of a trademark on a hashtag prohibits its use by web users, as the hashtag’s relevance lies in its sharing and propagation. Only its use by a competitor in his business activities would be likely to be suppressed and deemed to be an infringement.

There are some companies, mostly in the United Sates, that have managed to register trademarks containing the famous symbol ‘#’. For example, the operator T-Mobile USA has filed the trademark ‘#7NIGHTSTAND CHALLENGE’ (n°4671787) with the USPTO, United States Patent and Trademark Office. In France, the trademark ‘#CLIENT ADDICT’ has for instance been filed by Futur Telecom under n°4096205 in classes 9, 35, 38 and 42.

However, recently the California Central District Court, in its decision in the case Eksuzian. v. Albanese, dated 7 August 2015¹ took the position that hashtags could not be registered as trademarks due to their descriptive nature: ‘« hashtags are merely descriptive devices, not trademarks (…)’. However, according to USPTO, commercial trademarks are words, names, or symbols used to distinguish one product from another. They must have a distinctive characteristic. There are generally 4 levels of specificities from “arbitrary and fanciful” to “generic”. For the more arbitrary and fanciful ones, the USPTO² allows the registration of a hashtag as trademark. On the other hand, generic trademarks do not benefit from this protection. The stand of the USPTO is more logical than that of the court: the purpose of trademark law is to protect and promote the distinctive characteristic, and to prevent other bodies from taking advantage of such distinctive characteristic. A hashtag potentially promotes the name, the reputation or even the product of companies.

As such, be in in France, at community or even international level, it would seem undeniable and logical that in the future and despite this decision of the California District Court, a distinctive hashtag would continue to be registered as trademark. It will be interesting to see how the situation pans out…

¹ California Central District Court, Eksuzian. v. Albanese, 7 August 2015.

² United States Patent and Trademark Office.