As part of ICANN’s New gTLD Program, the registry Vox Populi has launched registrations for the <.sucks> domain names.
The TMCH Sunrise period opened on March 30, 2015 and will run until May 29, 2015. General availability registrations will begin on June 1, 2015.
The registration conditions of this new gTLD have caused the outrage of trademark owners and of their representatives.
The main criticism addressed to ICANN and the registry is the unfair pricing scheme. Indeed, the excessive Sunrise price of $2,499 acts as a deterrent for trademark owners whose trademark is registered in the TMCH. The Sunrise period was created as a Right Protection Mechanism to prevent cybersquatting and enable trademark owners to position themselves before others to protect their trademark rights on the Internet.
This inequality targeting specifically trademark owners is reinforced by the difference with the public prices of the general availability period, as the latter costs only 10% of the Sunrise price ($249). Subsidized offers are also available to third-parties for less than $10, widening the price gap and accessibility of the domain names between trademark owners and third-parties. This will ultimately deter trademark owners from registering domain names during the Sunrise period. It seems that the registry is using TMCH registrations and the Sunrise period against trademark owners.
Additionally, during the general availability period, Premium domain names will also be priced excessively. These Premium names, chosen arbitrarily, often include trademarks registered in the TMCH. Though this is detrimental for trademark owners, it might also deter cybersquatting patterns of conduct.
The price scheme shows the registry wishes to encourage individuals to register <.sucks> domain names with its subsidized offer for less than $10. Vox Populi wants the new gTLD to be used as a “central town square”, a place where valuable criticism is given. With this subsidized offer, the domain name will point directly to a ready-made forum on everything.sucks, encouraging people to criticize the trademark.
In this light, trademark owners are confronted to a major strategy issue:
– Invest in domain names to protect their trademark rights by preventing cybersquatting,
– Or defend their trademarks from abusive registrations ex post.
However, both of these options have downsides and obstacles. Indeed, the preventive registration strategy will be both very costly and only partially effective as the registration of alternative domain names comprising the trademark and typosquatting will not be prevented by early registration. As for the defense strategy, it will be strongly impacted by the meaning inherent to the <.sucks> gTLD and the freedom of speech can prevail on trademark rights.
In conclusion, opportunities and strategy should be one of the trademark owners’ main concerns when wanting to protect and defend their rights on the Internet regarding the <.sucks> gTLD. Dreyfus can assist you regarding the opportunity to register a domain name in the <.sucks> gTLD.
The entry into force of the digital publishing contract in France constitutes a structural reform of copyright law as applied to the book industry. By formally incorporating digital exploitation into the intellectual property Code, the French legislature put an end to persistent legal and contractual uncertainty and rebalanced the relationship between authors and publishers.
Digital publishing can no longer be treated as a mere technical extension of print publishing. It is now governed by an autonomous, demanding and strictly regulated legal framework. This evolution raises practical questions: What new obligations do publishers face? How is digital remuneration calculated? Under what circumstances may an author recover their digital rights?
A reform integrated into the French Intellectual Property Code
The ordinance of November 12, 2014 formally integrated digital exploitation into the statutory regime governing publishing agreements. Articles L.132-1 et seq. of the French Intellectual Property Code establish a fundamental principle: digital exploitation must be expressly provided for and precisely regulated.
This clarification put an end to overly broad clauses providing for the transfer of rights “on all media now known or unknown.” Such wording is no longer sufficient to secure the lawful exploitation of works in digital form.
Publishing agreements must now distinguish between print and digital modes of exploitation while ensuring overall economic consistency. This requirement directly addresses a recurring question raised by authors: may a publisher exploit a work in digital format without a specific clause? The answer is clearly no.
Digital exploitation: an autonomous and regulated obligation
One of the reform’s major contributions is the extension of the obligation of continuous and permanent exploitation to digital formats. A publisher cannot rely on mere passive availability. It must ensure effective distribution, genuine accessibility and consistent promotion of the work across digital platforms.
This obligation implies active conduct. The work must remain available to the public under normal commercial conditions. Prolonged unavailability or total absence of promotional efforts may constitute a contractual breach.
Transparency is the second cornerstone of the system. Royalty statements must clearly distinguish between print and digital sales. Authors must be able to identify download volumes, generated revenues and the calculation basis for their remuneration. This annual reporting obligation restores informational balance in a technological environment often characterized by opacity.
Author remuneration in the digital environment
The guiding principle remains proportional remuneration. In the digital sphere, this rule is particularly significant given the multiplicity of technical intermediaries involved in distribution.
Authors’ royalties are calculated on revenues derived from digital exploitation, in accordance with contractual provisions that must be precisely defined. Although digital platforms have reshaped the value chain, they have not altered contractual responsibility. The publisher remains the author’s primary contractual counterpart.
It is the publisher’s responsibility to ensure financial traceability and to avoid ambiguity regarding the royalty calculation basis. In practice, negotiations frequently focus on whether royalties are calculated on the retail price, the publisher’s net receipts, or the actual revenues received after platform commissions.
Termination, reversion of rights and corrective mechanisms
The entry into force of the digital publishing contract introduced reinforced protective mechanisms. In the event of failure to comply with the obligation of continuous and permanent exploitation, the author may formally notify the publisher to remedy the breach. If the publisher fails to comply within the prescribed period, termination may be declared.
This procedure serves as a critical safeguard, preventing publishers from retaining digital rights without genuine intent to exploit them.
The reform also provides for mechanisms allowing the re-examination of economic conditions. Where market developments substantially alter the contractual balance, renegotiation may be requested. This reflects an adaptation of copyright law to technological and commercial evolution.
Strategic implications for authors and publishers
The entry into force of the digital publishing contract extends beyond a technical adjustment. It reshapes contractual governance within the book industry.
For publishers, it requires rigorous legal structuring and transparent accounting practices. Any drafting imprecision may result in litigation or loss of exploitation rights.
For authors, it strengthens control over the digital dissemination of their works. They are entitled to demand effective exploitation, detailed reporting and remuneration consistent with statutory principles.
In a context where ebooks coexist with audiobooks, subscription models and international platforms, contractual security has become a central component of publishing strategy.
Conclusion
The entry into force of the digital publishing contract in France represents a decisive step in adapting intellectual property law to contemporary uses. It imposes transparency, effective exploitation and economic balance.
This new legal framework enhances author protection while professionalizing publishing practices. It calls for heightened vigilance in drafting and negotiating publishing agreements.
Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.
1. Must a digital publishing contract include a specific digital clause?
Yes. Since the 2014 reform, digital exploitation must be expressly provided for and governed by distinct contractual provisions. A general clause is no longer sufficient to secure the transfer of digital rights.
2. What does the obligation of continuous and permanent exploitation mean in digital publishing?
The publisher must ensure effective and ongoing digital availability of the work. Merely listing the work online without active distribution or promotion may constitute a contractual breach.
3. How are royalties calculated for an ebook?
Royalties are generally based on a percentage of revenues derived from digital exploitation. The contract must clearly define the calculation basis to prevent ambiguity or disputes.
4. Does an old clause covering “all media now known or unknown” include digital formats?
Not necessarily. Current legal standards require precise identification of transferred rights. Overly broad clauses may be challenged if digital exploitation is not specifically detailed.
5. Under what circumstances may an author recover their digital rights?
An author may seek termination of its publishing contract in the event of failure to ensure continuous exploitation or other serious contractual breaches. After formal notice and absence of remedy, digital rights may revert to the author.
This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.
Since the fall of Mouammar Khadafi in 2011 and the civil war which engulfed Libya, the Libyan Industrial Property Office was being incessantly opened and closed, rendering trademark protection difficult in the country.
The Libyan Intellectual Property Office was reopened on December 7, under the control of the Fajr Libya militia.
While it is once again feasible to file applications for new trademarks, it cannot be said for sure that their registration will be valid given that the political situation remains volatile in Libya. It is not certain whether the Fajr Libya militia will manage to keep control over the Office.
The Government and the Libyan Parliament are trying to regain control of the Office. It is thus not recommended to file applications for new trademarks for the time being in Libya.
Dreyfus & associés is at your disposal for any advice on this matter.
The Member States of the European Union are particularly committed to copyright protection. However, the European Union based on free market principles, has lately relaxed its protective stance. In this regard, the Order of the Court of Justice of the European Union (CJEU) of October 21, 2014 addressed the issue of the framing. This technique involves incorporating a web page of a site within another site through a frame. The purpose of framing is to increase the number of connections automatically.
In Germany, the company BestWater had produced a commercial which was later uploaded on YouTube without its authorization. The video was taken up by two independent commercial agents to promote the products of a competitor. BestWater filed infringement proceedings, demanding the termination of the broadcast. Its claims were rejected by the German lower courts on the grounds that the work, i.e the video, was already disclosed to the public as a result of its first broadcast on YouTube. Consequently, a new communication to the public, using the same technical medium, cannot be described as a communication to a new public. BestWater appealed to the Federal Court of Justice (Bundesgerichtshof), which encountered a difficulty with the interpretation of Directive 2001/29 on copyright and related rights. Indeed, Article 3§1 of the Directive requires, in principle, permission of the copyright holder, from the time that there has been communication to the public.
The German Federal Court then referred the following preliminary question to the CJEU: “Can the fact that the work of another person made available to the public on a website is inserted in another web site under conditions such as those of the main proceedings be described as ‘communication to the public’ within the meaning of Article 3, paragraph 1, of Directive 2001/29, even where the work in question is not transmitted to a new audience or communicated through specific technical means different from that of the original communication.” In other words, what happens when the said video is embedded in a third party site? Is the criterion of the “new public” met and is a new authorization of the right holder required?
To determine the issue, the ECJ drew inspiration from the Svensson case dated February 13, 2014 concerning Internet links. The Court held that embedded videos cannot be described as “communication to the public (…) to the extent that the work in question is not transmitted to a new public or communicated through a specific technical means different from that of the original communication.” Thus, if the right holder initially allowed the video to be uploaded on YouTube, they cannot prevent the “embedding” on third party sites. Otherwise, all Facebook users who share videos with their “friends” would have incurred liability, with potentially chaotic proceedings as a result. Moreover, from another point of view, the framing would thus enable appropriating the work of another person while avoiding the scope of provisions regarding reproduction rights. One can raise the question of how fair this technique really is, too.
This decision regarding framing has reinforced the case law of the Court of Justice which is already well settled with respect to hyperlinks.
As from July 2015, cybersquatters will not be able to “fly” towards another registrar when they are targeted by an UDRP Complaint!
ICANN (Internet Corporation for Assigned Names and Numbers), the organization responsible for naming the Internet, announced recently the approval of new URDP (Uniform Domain-Name Dispute-Resolution Policy) rules. The main amendment aims to fight against “Cyberflight”.
This change has its origins in the GNSO’s (Generic Names Supporting Organization, the body representing the States within ICANN) recommendations which are stated in the Report on blocking domain names covered by UDRP complaints, dated July 5, 2013.
Cyberflight is a relatively common practice used by cybersquatters who, upon receipt of an UDRP complaint, transfer the domain to another registrar. GNSO observes in its report that most of the registrars were blocking the domain names following a notification relative to the lodging of an UDRP complaint. However, it is not a regular practice as there were no UDRP rules regarding such blocking. Thus, where the domain name was not blocked, the cybersquatter could change registrar and avoid the UDRP dispute.
According to the new rules, any accredited registrar must, within 2 business days, block the domain name upon notification of an UDRP procedure (rule 4(b)). This technical measure prevents the transfer but affects neither the resolution of the domain, nor its renewal. Thus, the holder of the disputed domain name will not be able to change the registrant or registrar. Blocking the domain name will not have an impact on the registrar’s obligation to provide the real identity of the registrant.
Another change which aims to restrict cyberflight consists in the removal of the complainant’s obligation to send a copy of the complaint to the respondent (rule 3(b)(xii)). Thus, the holder of the disputed domain name is not informed as from the start of the UDRP proceedings and before the domain name is blocked by the registrar. He is also prohibited from notifying the holder of the domain name.
In situations where the complaint is either withdrawn or dismissed, the registrar must withdraw the blockage within one business day.
We can only applaud these new rules which will come into effect on July 31, 2015 and shall apply to all registrars accredited by ICANN.
Abu Dhabi, an Emirate state in the United Arab Emirates, recently enacted a new directive to regulate trade names, in particular to prevent the development of conflicts with trademarks.
This law is applicable locally and is in line UAE trademark laws. It applies to companies operating in Abu Dhabi and using trade names. This law regulates which trade names can or cannot be registered.
The purpose of the law is to prevent the continuing conflicts between trademarks and trade names in the country, which are currently a genuine issue because the two databases were never cross-checked. Many trademark owners have long suffered from their trademarks being registered and used as trade names. Indeed, trade names are not published as it is the case for trademarks, and therefore, it is not possible to object to their adoption. Thus, the new directive will help to prohibit the registration of trade names which are identical or similar to locally or internationally registered trademarks. In the absence of the trademark owner’s authorization, it will thus be impossible to register an identical or similar trade name.
In the future, this new law should minimise conflicts between trade names and registered trademarks.
Events with significant media coverage, whatever their nature, often provide self-seekers with a golden opportunity to exploit the situation for commercial ends. Thus, unscrupulously some have sought to take advantage of the tragic attacks which occurred in Paris. Barely a few hours after the attack against the editorial team of the satirical newspaper, Charlie Hebdo in the morning of January 7, 2015, the INPI, the National Institute of Industrial Property, received about fifty filing applications for the “Je suis Charlie” trademark and derivatives thereof.
The broadcast of this slogan, created by Joachim Roncin, artistic director of Stylist magazine, half an hour after the attack, was beyond measure. The whole world, with social networks in the front line, took over and almost instantly popularized the visual. Faced with such magnitude, the creator of the visual formally opposed any commercial use of the message and the image. The INPI responded on the same day by issuing a press release announcing the dismissal of such filing applications on the grounds that “this slogan cannot be picked up by an economic actor due to its wide use by the community.” Thus, a few hours sufficed to render “Je suis Charlie” world famous and inalienable. Beyond the ethical aspect, would the widespread use of this visual have therefore rendered it devoid of any distinctive character?
This rejection is not so obvious and may be legally questionable. In accordance with Article L711-2 of the Code of Intellectual Property, “are devoid of any distinctive character: signs or names which in everyday or technical language simply constitute the necessary, generic or usual product or service; signs or names which may serve to designate a characteristic of the product or service (…); signs which consist exclusively of the shape imposed by the nature or function of the product.” However, at the time of filing, the slogan had not yet become part of common parlance or professional language to describe a product or service, nor any of its characteristics and could not necessarily be considered as being a sign constituting a product. Consequently, the slogan could have been treated as distinctive. The argument of the INPI for rejecting the distinctive character is therefore questionable. The INPI should have instead chosen a contention based on public policy to oppose trademark applications to the extent that a monopoly on the slogan could restrict freedom of expression.
Nevertheless, the intention of the INPI is commendable. An extreme state of affairs begets an extreme remedy and the informed position adopted by the INPI can only be saluted. Indeed, the INPI’s role is to examine trademark applications and it may reject them if they do not meet the substantive requirements for registration as required by law. Once the trademark is filed, the INPI publishes the registration of the trademark within a period of six weeks. After this period, the examiner scrutinizes the merits of the application and may raise objections. Third parties also have the opportunity to submit comments or to object to the registration of the trademark, when it published. In this case, the INPI issued a provisional refusal objection to these registrations. The applicants concerned can respond to this objection. Indeed, they can react and respond to this objection within two months, should they so wish to do so. However in view of the exceptional situation, their responses will have little chance of success.
Thus, the shady affair surrounding Charlie should not take place, at least legally in France. It is rather different in practice and the INPI could not, over the last few days, hinder the surge of multiple products bearing the image of the famous visual on eBay, such as stickers or T-shirts. Moreover, due to the international media buzz around the attacks, other foreign offices, such as the Benelux Office or the United States, have received similar requests. As concerns Benelux, the process is ongoing and the decision should be taken within two months. In the United States, Steven Stanwyck and Kelly Ashton also filed the trademark with the USPTO (the US Patent and Trademark Office) for communication and advertising services falling within class 35. In addition, during the registration [procedure], they specified that they wished to use this brand for non-profitable purposes. The USPTO (United States Patent and Trademark Office) has not responded yet.
More recently, the Community Trademark Office (OHIM) received a community trademark application for the same mark, that is, to be protected throughout the entire territory of the 28 countries across the European Union. The application for registration will, in all probability, be rejected because it is likely to prejudice the public interest. In fact, this trademark should be considered contrary to public order and morality. The INPI has no power to contest such registrations outside French territory and therefore cannot prevent foreign companies from disseminating the “Je suis Charlie” mark in the future.
Furthermore, in parallel to these filing applications, domain names such as “charliehebdomassacre.com” or “je-suischarlie.com” were put on sale. The latter, for instance, is on sale display for 349 euros on the domain name sales platform Sedo, the market leader. When confronted with such dishonest business, registrars do little, if anything at all and hide behind the first-come, first-served principle and allege that they must remain neutral and passive. However, in case of a dispute over the registration or use of a domain name, it is nonetheless feasible to initiate actions, particularly in cases of fraud like the UDRP procedure.
Given the current context, it is advisable that registrars, at least the French ones, align themselves with the stance adopted by the INPI in refusing to register such domain names for reasons of public order.
The development of tools to combat cybersquatting, in particular DPML (Domains Protected Marks List) and MPML (Mind + Machines’ Protected Marks List) mechanisms, is a significant shift in online trademark protection. In the face of the proliferation of generic top-level domains (gTLDs) and the industrialisation of fraudulent domain name registrations, reactive litigation alone is no longer sufficient.
The key issue is no longer how to recover an infringing domain name, but how to prevent its registration altogether. In this context, preventive blocking mechanisms represent a decisive strategic opportunity for trademark owners.
A digital environment conducive to large-scale cybersquatting
The expansion of generic top-level domains (new gTLDs), initiated under the ICANN framework, has profoundly transformed the digital environment for rights holders. Whereas monitoring efforts were historically focused on a limited number of strategic extensions such as .com, .net or .fr, the landscape now includes hundreds of thematic and sector-specific extensions.
This fragmentation has created particularly favourable conditions for cybersquatting. Practices have become more diversified and sophisticated, including mass speculative registrations following public announcements, targeted typosquatting, exploitation of SEO vulnerabilities, phishing campaigns and identity theft schemes.
In such an environment, relying solely on post-infringement remedies often results in a continuous and costly defensive effort.
Structural limitations of traditional anti-cybersquatting procedures
Trademark owners traditionally rely on mechanisms such as the UDRP (Uniform Domain Name Dispute Resolution Policy), the URS (Uniform Rapid Suspension System) or national court actions. While these tools remain essential, they are fundamentally curative in nature.
Each procedure requires evidence of bad faith, prior rights and a likelihood of confusion. They involve legal costs, procedural timelines and internal resource allocation. Most importantly, they intervene only after the infringement has occurred, sometimes after reputational damage has already been inflicted.
As the number of extensions increases, the cumulative cost of individual enforcement actions may become disproportionate. The strategic challenge is therefore to shift from a reactive to a preventive approach.
DPML : a large-scale preventive blocking tool
The DPML (Domains Protected Marks List) is based on a straightforward but powerful principle : preventing the registration of a domain name corresponding to a trademark across a portfolio of extensions operated by a specific registry.
Available to trademark owners whose marks are recorded in the Trademark Clearinghouse (TMCH), the mechanism does not grant ownership of the domain names but blocks their registration by third parties. It operates as a preventive neutralisation tool.
The strategic value of DPML lies in its multiplier effect. Instead of defensively registering a trademark across each relevant extension, the owner activates a single mechanism covering an entire portfolio of extensions. This approach rationalises overall costs and simplifies administrative management.
For highly exposed or international trademarks, DPML offers a proportionate response to industrial-scale cybersquatting risks.
MPML : a blocking tool specific to the Minds + Machines registry
The MPML (Mind + Machines’ Protected Marks List) is a blocking service implemented by the Minds + Machines (MMX) registry.
Inspired by the DPML model, it enables trademark owners whose marks are :
• registered,
• composed of at least three characters, and
• validated with the TMCH (Trademark Clearinghouse),
to obtain an identical match block, and, depending on the options available, an extended block, across the domain name extensions operated by Minds + Machines.
Unlike a standalone multi-registry mutualization system, the MPML applies exclusively to the portfolio of TLDs operated by this registry (for example: .law, .fashion, etc.).
Certain domain names may be excluded from the mechanism (in particular names reserved or blocked at the ICANN level). The duration and specific terms of the block vary in accordance with the applicable registry conditions.
The MPML therefore follows a logic comparable to that of the DPML : a preventive tool, linked to a specific registry, designed to optimize protection across its portfolio of extensions.
An economic and reputational opportunity for trademark owners
The benefits of blocking mechanisms go beyond reducing litigation. They directly contribute to reputational protection and the safeguarding of strategic launches.
The period preceding the public announcement of a new product or trademark is particularly sensitive. Speculative registrations frequently occur within hours of an official communication. Activating a blocking mechanism beforehand can effectively prevent such opportunistic behaviour.
A recurring scenario involves technology or financial companies targeted by phishing campaigns using domain names identical to or closely resembling their trademarks. Preventive blocking significantly reduces the vectors available for impersonation.
DPML and MPML therefore form part of a broader digital risk management strategy.
Conclusion
DPML and MPML now represent a major strategic opportunity for trademark owners seeking to anticipate cybersquatting risks. When implemented within a coordinated domain name management policy, these mechanisms strengthen the resilience of intangible asset portfolios and enhance corporate digital credibility.
Dreyfus & Associés supports its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.
1. Does DPML completely prevent any use of a trademark in a domain name ?
No. DPML blocks the exact match of the protected sign within the covered extensions but does not automatically neutralise complex combinations or additional descriptive terms. Complementary monitoring remains necessary.
2. Can a DPML block be lifted if the trademark owner wishes to use the domain name ?
Yes. The trademark owner may generally override the block in order to register and use the relevant domain name, subject to the registry’s applicable conditions. This flexibility allows strategic adjustments.
3. Do DPML and MPML cover country-code extensions such as .fr, .de or .cn ?
No. These mechanisms primarily apply to certain generic top-level domains (gTLDs). Country-code domains are governed by specific national registry policies and require a dedicated strategy.
4. Can an unregistered trademark benefit from DPML protection ?
Access to blocking mechanisms requires a registered trademark validated through the Trademark Clearinghouse, excluding unregistered or purely commercial designations.
5. Does implementing DPML eliminate the need for domain name monitoring ?
No. While blocking significantly reduces risk, it does not replace active monitoring, particularly for extensions not covered or for variants outside the scope of the blocking mechanism.
This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.
We are pleased to inform you that the book “L’élu(e) face au numérique” by Pascale Luciani-Boyer (publisher: Berger Levrault) is now available. The book aims at defining the roles of elected representatives dealing with issues in relation to digital technology as well as suggesting relevant organisational models.
Nathalie Dreyfus contributed to the book and thus analysed the difficult issue of the protection of names of local authorities as trademarks. The book is available as from January 2015.
Labels and packaging recently became some of the most counterfeited items. In 2013, they accounted for more than one million of counterfeit goods seized by French customs authorities.
With customs services on the frontline in ensuring observance of intellectual property rights, it now seems vital for trademark holders to protect their rights at customs.
Customs will only act if the right holder previously filed a request for intervention with a view to withholding the suspected counterfeit goods at customs.
It is incumbent upon the person alleging that there has been infringement to show evidence to the customs authorities of the existence of an intellectual property right protected under French law.
As concerns trademarks, the registration certificate must be provided. The list of products for which the trademark is protected must also be specified.
Where counterfeiting of labels or packaging is concerned, the request for intervention to the customs authorities is be admissible only if the infringing mark is covered by Class 16 (stationery; adhesives; adhesive materials, plastic materials for packaging; printing blocks).
It is thus useful to protect trademarks under Class 16 in order to be able to initiate action against counterfeit labels and packaging at customs.
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Written by Nathalie Dreyfus08/04/2015 
As part of ICANN’s New gTLD Program, the registry Vox Populi has launched registrations for the <.sucks> domain names.
