On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the implementation of new generic Top Level Domains (gTLDs) (1) in addition to traditional domain names such as “.com”, “.org” or “.net”. In order to expand the market place, the ICANN program plans to allow applications for new domain name endings in almost any word.
Kurt PRITZ, ICANN’s Senior Vice President for Stakeholder Relations, testified on December 8, 2011 before the U.S. Senate Committee on Commerce, Science & Transportation that this will increase competition, choice and innovation (2). However, it seems that many questions remain unanswered regarding the protection of the rights such as trademark rights.
According to the numerous vociferous oppositions addressed to ICANN, it seems that its program for further TLD needs to be improved (3). Among the opponents, it is worth noting the Association of National Advertisers’ (ANA) initiative. Indeed, Robert LIODICE, CEO of ANA recently proposed “a way forward which could bring together the parties” (4).
Thus, “to address in a positive way critical concerns that have been aired and acknowledged in a public and transparent fashion over the course of the past five months”, the ANA notably suggest that the following notifications be observed:
– “All commercial stakeholders concerned about protecting their brands will be given the opportunity to have those brands registered, without cost, on a temporary “Do Not Sell” list to be maintained by ICANN during the first application round”.
– “Any interested party which does not want to have its brands on the “Do Not Sell” list and would rather apply for a TLD would be free to do so”.
As the beginning for introducing new TLDs is scheduled on January 12, 2012, ANA urged that its proposition be accepted immediately.
To be continued…
(1) ICANN Board Resolution 2011.06.20.01, at http://www.icann.org/en/minutes/resolutions-20jun11-en.htm
(2) PRITZ Kurt, Hearing on Expansion of Top Level Domains before the U.S. Senate Committee on Commerce, Science & Transportation, December 8, 2012, at
http://republicans.energycommerce.house.gov/Media/file/Hearings/Telecom/121411/Pritz.pdf
(3) CADNA, U.S. Senate Holds Hearing on ICANN’s New gTLD Program, CADNA Sees Hearing as Springboard for Reform of New gTLD Policy, December 8, 2011, at http://www.prnewswire.com/news-releases/cadna-sees-senate-hearing-as-springboard-for-reform-of-new-gtld-policy-135272028.html
(4) ANA, Open Letter to the Board of Directors, Internet Corporation for Assigned Names and Numbers, January 9, 2012, at http://www.ana.net/content/show/id/22757
On March 2011, EU Patent system gets the go-ahead, and the enhanced cooperation procedure will be used. Said procedure allows groups of Member States to integrate policies further, even where others Member States do not agree. In short, it permits to avoid deadlock. Spain and Italy have chosen not to participate in the system because Italian and Spanish are not recognized as official languages. It seems that Italy, but also Spain might slowly abandon its resistance.
The EU patent package includes an EU regulation covering the Unitary Patent, its language regime and an international agreement on the Unified Patent Court. An EU patent will permit to obtain simpler, cheaper and more expedient patent for companies and individuals to get EU-wide protection for their inventions. EU patent will promote small and medium-sized enterprises (SMEs) innovation. Nowadays, it’s ten times more expensive to obtain national patent than a US patent. Thus, the agreement is a major step for EU industry’s competitiveness.
According to the Polish Presidency of the Council, “the compromise was broadly accepted in substance – but further work is still needed”. After the Competitiveness council in Brussels on December 5, 2011, only the seat of the Central Division of the Unitary Patent Court needs to be decided. Three candidates compete for the seat of this main litigation court: Paris, the UK and Germany. The seat of the second Instance Court of Appeal will be in Luxembourg. Lisbon and Ljubljana are set for the seat of Arbitration and mediation center.
The legal Affairs Committee validated on the agreement on December 20, 2011. Next step before the agreement comes into force, it must be endorsed by the full Parliament, possibly during the plenary session in February.
A pharmaceutical laboratory which copies one of his competitor’s product’s packaging for a same market place not only commits unfair competition act but also free riding. As the Paris Court of Appeal said: “this breaks the equality between the various competitors, distorts normal market, causing a disturbance to business”.
After underlining the importance of the user’s information and the need to look for the risk of confusion, the Court reminds that a well-based unfair competition action is valued via evidence arrays. However, the Court of Appeal partially invalided the judgment of first instance which considered that the competitor didn’t commit free riding. Indeed, according to the Paris Court of Appeal: “the appellant, substantially drawing from his competitor’s product’s packaging […] appropriated an individual economic value and the result of research and specific design work, providing a competitive advantage”.
So, free riding is invoked in France even if the two laboratories are competitors on the same market place. Copying a product’s packaging really constitutes unfair competition but it seems useless to consider the free riding theory which is a sanction of taking over others’ reputation without any potentially common market.
This Charter constitutes the normative foundation of the .fr extension. It governs not only the technical conditions of allocation, but above all the eligibility criteria, the obligations relating to registrant identification, the monitoring mechanisms, and the corrective powers vested in AFNIC. Unlike generic extensions, access to the .fr extension is therefore subject to legal requirements linked to territorial anchoring and registrant responsibility.
The new eligibility criteria applicable to .fr domain names, introduced by the Charter in 2011 and subsequently consolidated, reflect a profound evolution: opening the extension to European stakeholders while strengthening legal certainty, traceability, and the fight against abusive uses. These rules have direct implications for French companies, international groups, trademark owners, and legal and digital teams.
The legal and regulatory framework governing eligibility for .fr
AFNIC administers the .fr extension under a public service delegation. As such, its role is not limited to a technical function: it implements an allocation policy based on public-interest objectives, including the security of exchanges, the reliability of actor identification, and the protection of third-party rights.
The Naming Charter is binding on all registrars and registrants. It grants AFNIC the power to verify eligibility at any time, to request supporting documents, and, where appropriate, to suspend or delete a domain name in the event of non-compliance.
The .fr regime is grounded in the French Postal and Electronic Communications Code (CPCE). This legal basis gives the eligibility criteria binding legal force, going well beyond a simple contractual relationship between the registrant and the registrar.
The new eligibility criteria applicable to .fr domain names
The reform has profoundly changed the philosophy of eligibility. Nationality is no longer relevant. The decisive criterion is the existence of an objective territorial link with Europe.
A .fr domain name may be registered by:
natural persons residing within the territory of one of the Member States of the European Union, or within Iceland, Liechtenstein, Norway, or Switzerland;
legal entities established within those same territories.
Domain names registered prior to the entry into force of these criteria were not called into question. Historical registrants may continue to renew and use their domain names, even if they would no longer meet today’s eligibility conditions.
The new criteria are accompanied by heightened requirements regarding the quality and accuracy of registrant data. Registrants must be reachable and identifiable at all times. AFNIC may carry out spot checks or targeted audits, particularly in the event of a dispute or a report.
Eligibility in practice: natural persons and legal entities
A natural person is eligible provided that they can demonstrate effective residence in an eligible territory. A mere domiciliation or accommodation address is insufficient. AFNIC may require evidence establishing the reality of such residence.
Companies must demonstrate an effective establishment: registered office, branch, subsidiary, or permanent establishment. For international groups, the creation of a European entity often constitutes a strategic lever for securing a .fr domain name portfolio.
Alignment between domain name ownership and the company’s actual legal structure is therefore decisive.
Strategic impacts for businesses, trademarks, and SEO
The .fr extension remains a strong marker of credibility for French users. It enhances consumer trust, facilitates the identification of the economic operator, and improves local visibility on search engines.
Eligibility does not confer any proprietary right. A domain name may be fully eligible while still infringing a prior trademark, a company name, or a trade name.
The analysis must therefore be twofold:
Compliance with AFNIC eligibility criteria, on the one hand;
Lawfulness with regard to prior rights, on the other.
Eligibility, compliance, monitoring and dispute mechanisms
Eligibility is not assessed solely at the time of registration. It constitutes a continuing obligation. Any change in circumstances (restructuring, relocation, transfer) may affect the validity of the domain name.
In cases of abusive or bad-faith registration, right holders have access to specific procedures enabling them to seek the cancellation or transfer of the domain name (including UDRP proceedings). Reliable identification of the registrant then becomes a major procedural advantage.
Conclusion
The new eligibility criteria for .fr domain names, as set out in AFNIC’s Naming Charter, reflect a clear objective: to maintain a reliable, traceable, and legally secure French digital space, while opening it to European economic actors.
The .fr extension remains a strategic asset, the management of which requires a rigorous and forward-looking legal approach.
Dreyfus & Associés 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.
1. Is using a French service provider or registrar sufficient to meet the eligibility requirements?
No. Eligibility is assessed solely at the level of the domain name holder. Relying on an intermediary established in France does not satisfy the requirement of an effective territorial link.
2. Can a change in a group’s legal structure weaken a .fr domain portfolio?
Yes. A merger, assignment or transfer of activity may disrupt the alignment between the domain name holder and the eligible entity, exposing the domain name to a risk of non-compliance.
3. Does eligibility provide protection against trademark-based actions?
Absolutely not. Compliance with AFNIC rules does not exclude trademark infringement or unfair competition claims. A compliant domain name may still be challenged on the basis of prior rights.
4. Is the .fr extension suitable for an international digital strategy?
Yes, provided it is integrated into a coherent domain name architecture. The .fr extension should be coordinated with other TLDs to avoid conflicts and optimise territorial protection.
5. Why is legal anticipation essential when managing a .fr domain name?
Because the .fr extension is governed by a specific legal framework that goes beyond purely technical considerations. A proactive legal approach makes it possible to ensure compliance with AFNIC’s rules, prevent infringements of third-party rights, and secure both the ownership and the use of the domain name. It thereby reduces the risks of suspension, forced transfer or litigation, and ensures continuity of operations.
This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific circumstances or to constitute legal advice.
We have the pleasure to announce the publication of the book « Trademarks and Internet » by Nathalie Dreyfus. This book offers an analysis of the evolution of French and International laws related to the protection and the defense of trademarks on the Internet in both Web 1.0 and Web 2.0 levels. It is available as from December 8, 2011.
After discovering on October 11, 2011 that their administrative rights on their Facebook page did no longer exist, the German drug maker Merck KGaA began legal action against Facebook.
The German firm has since filed a petition (1) to allow pre-action disclosure with the Supreme Court of the state of New York. Merck KGaA intends to demand details as to why Facebook will not allow them to use the “facebook.com/merk” username for their Facebook page: “Facebook is an important marketing device, the page is of great value to Merck” (2).
If any clear information had been provided about what happened, the said webpage is now used by the German firm’s US rival Merck & Co. In spite of Merck KGaA entering into an agreement with Facebook for its exclusive use in March of last year, the page on the social-networking site is filled with content related to the U.S. compagny. The Merck KGaA counsel exposes that: “Merck is considering causes of action for breach of contract, tortuous interference with prospective business advantage, and/or conversion. Merck requires pre-action disclosure from Facebook to determine the nature of the misconduct, to frame the pleadings, and to identify the proper defendant or defendants” .
This action based on an apparent takeover of a Facebook page is enlightening in two major ways. First, it confirms that social media usernames are today as important as domain names or trademarks. Second, this calls attention to a legal blur in this area: UDRP (Uniform Dispute Resolution Policy) rules don’t apply to social media URLs yet. Indeed, the decision to declare that a username would have been usurped or not will only lie on Facebook.
It is worth noting that the two Mercks became separate companies under the Treaty of Versailles, as part of Germany’s reparations after World War 1, each owning rights on the Merck’s trademark in different geographic areas.
To be continued…
(1) New York State Supreme Court, New York Country (Manhattan), Index Number Search: 11113215-2011
(2) Ibid
New type of outsourcing of computing resources which enables to access, via Internet and by means of a simple web browser, multiple services, the Cloud computing constitutes a major economic stake but also raises new questions, notably regarding personal data protection.
The debate launched by the French data protection authority (CNIL) is to define the concept of Cloud computing. In this respect, the CNIL believes that any definition should be based on the features specific to Cloud Computing.
The CNIL is also concerned with the qualification of stake holders. Although the service provider is usually qualified of a subcontractor or data processor, the CNIL wonders if, in some cases, both the client and the service provider should be jointly qualified data controllers. For instance, the CNIL refers to the necessary assessment of the extent to which the service provider controls the data.
The question of the identification of the applicable law is addressed to stakeholders. Especially, regarding the criterion of the “processing means”, the CNIL whishes to know which other criteria would enable the determination of applicable law.
The CNIL also addresses the issue of instruments which could provide a framework to regulate data transfers to non-EU third countries failing to provide any adequate protection. In this regard, the CNIL suggests the use of Binding Corporate Rules, especially in the field of subcontracting, which is bound to know a great development in the next few years.
Beyond the problematic of the personal data transfers, the CNIL raises questions about security, especially confidentiality and reversibility, and wonders how those requirements should be materialized in contracts. It also addresses the issue of risk assessment before switching over to Cloud computing.
The replies to the call for contributions are expected for November 27, 2011. There is no doubt the CNIL is bound to play a critical role in the interaction between Cloud computing and personal data protection.
Manwin Licensing International company just sued the ICANN and ICM Registry for antitrust violations. ICM Registry is the sole operator of the .XXX registry. In its complaint filed on November 16, 2011, Manwin denounced their union which would have the effect of eliminating competitive bidding and reducing the market for .XXX registry services. Manwin also evokes the hostage-taking of trademarks owners who had to make defensive registrations to fight against cybersquatting. It would affect both competition and consumers. In addition, without any other authorized operators of the .XXX registry, the price for “defensive registration” is high set and the profit for those registrations is expected to be $200 millions in annual.
Following a decision from the French Competition Authority sanctioning Pierre Fabre Dermo-Cosmétique on October 29, 2008, the later lodged an appeal. The Court of Appeal of Paris addressed a reference for a preliminary ruling to the ECJ to know whether a total and absolute prohibition on selling contract products on the Internet, imposed on selected distributors within the framework of a selective distribution network, constitutes an infringement of Competition law of the European Union. Pierre Fabre Dermo-cosmétique manufactures and markets cosmetics and personal care products. In the agreements with distributors, a clause required sales to be made exclusively in a physical space, in which a qualified pharmacist must be present.
On October 13, 2011, the ECJ (1) confirmed the French Competition Authority decision.
First of all, the ECJ stated that a clause in a selective distribution contract banning the distributors of the company Pierre Fabre Dermo-cosmétique from selling its products online amounts to a restriction on competition by object (2), unless that clause is objectively justified, in particularly regarding to the properties of the products at issue. From there, the ECJ held that the clause requiring sales of cosmetics and personal care products to be made in a physical space where a qualified pharmacist must be present is not objectively justified in the context of the sale of non-prescription medicines.
Then, such a ban may be the object of an exemption. As to whether a selective distribution contract may benefit from the vertical block exemption (3), the ECJ held that the provisions of the vertical block exemption could not apply to a selective distribution agreement which contained a clause prohibiting de facto the use of the internet as a method of marketing the contractual products. However, such contract may benefit from the individual exemption (article 101.3 of the TFEU) provided that the conditions of that provision are met. This element will be decided upon by referring French Court of Appeal. Its decision is expected in the course of the first semester of 2012.
(1) ECJ, 13 oct. 2011, aff. C 439/09, Pierre Fabre Dermo-Cosmétique c/ Président de l’Autorité de la concurrence e.a.
(2) Art 101 of the TFEU (Treaty of the Functioning of the EU of 1st December 2009
(3) Commission Regulation (EC) No 2790/1999 of 22 December 1999 on the application of Article 81(3) of the Treaty to categories of vertical agreements and concerted practices (OJ 1999 L 336, p.21).
Since October 24, 2011, OHIM offers a mediation service in parallel to proceedings of appeal before the Board of Appeal. Said procedure allows the parties to reach an amicable settlement and suspends the appeal proceedings.
Mediation talks will normally be held in Alicante and the service itself is offered free of charge. A one-off fee is charged in the event that the parties wish to hold the mediation talks in Brussels in order to cover the traveling expenses of the mediator.
Mediation provides a swift and less costly alternative to litigation. It aims at bringing the parties together and assisting them in finding common ground on which a potential settlement may be made. The subject-matter of the mediation may, however, go beyond the scope of OHIM appeal proceedings and embrace future and present commercial and economic interests of the parties.
A team of eight qualified mediators has been drawn from various parts of the Office. They are all very experienced staff of the Office who underwent special training with the Chartered Institute of Arbitrators (CIARB) in London. Their CVs are published on the OHIM website so that the parties can require the services of a mediator in particular.
The parties retain control over the way the procedure is handled and its outcome. If the mediation fails, the appeal proceedings will resume from the point reached prior to the mediation. The mediator will never be involved in the appeal proceedings and is bound to keep the substance of the mediation confidential. Further, no record or files pertaining to the mediation will be retained by OHIM.
Depending on the success of this new service, the Office could consider to widen its scope to other appropriate stages of inter partes disputes. To be continued!
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Written by Nathalie Dreyfus12/01/2012 
