domain name

In today’s digital landscape, having a strong online presence is essential for virtually every business.
The domain name is not just a technical address but rather a strategic asset and the first impression many customers get when interacting with your brand on the internet. Losing control over your domain name or failing to protect it adequately can lead to severe consequences such as lost traffic, reputational harm, or even costly legal disputes.

In this extensive guide (up to 10,000 words), we will explore all facets of domain name protection – from the relevant legal framework (covering aspects like unfair competition and trademark infringement) to practical strategies for ensuring a proactive defense (monitoring, recovering expired domains, multiple TLD registrations, etc.) and handling complex issues (UDRP, Syreli, conflicts with prior or subsequent trademarks).

Specifically, we’ll cover:

• Why protecting a domain name is crucial;
• Relevant legal and regulatory bases (such as article L.45 of the CPCE for .fr domains in France, the Intellectual Property Code, etc.);
• The differences between a domain name vs. an earlier or later trademark;
• Best practices for securing and monitoring your digital portfolio;
• The role of unfair competition and trademark infringement actions to enforce your rights;
• Recovering an expired or third-party-held domain name through auctions, backorders, or legal proceedings;
• A thorough FAQ addressing key questions (e.g., “How do I prove domain name ownership?” “What are the three components of a domain name?”).

We’ll reinforce everything with practical examples and statistics (such as the number of disputes handled through the UDRP, average resolution times, etc.). Finally, we’ll illustrate how a specialized firm like Dreyfus can help ensure robust and lasting protection of your online presence.

1. Why Is Domain Name Protection So Critical?

In a highly competitive digital world, your domain name represents the core of your brand’s online footprint. It serves as a unique identifier for search engines and internet users. Losing control of your domain name can result in:

• Loss of visibility: If a third party registers a confusingly similar name, it can siphon off your web traffic or create consumer confusion.
• Reputational damage: A cybersquatter might host malicious or defamatory content under a domain that people associate with your brand.
• Exorbitant costs: Legal or extrajudicial recoveries can be lengthy and expensive, with no guaranteed outcome.
• Risk of legal sanction: If you accidentally infringe on someone else’s earlier trademark by using a conflicting domain, you could face a lawsuit and potential liability.

According to a Verisign study, there were about 350 million registered domain names globally (across all TLDs) by the end of 2022. Every day, over 100,000 new domains are created, while thousands expire or change registrants. In this dynamic environment, vigilance is paramount.

2. Legal Framework and Key Regulations

2.1. Article L.45 of the CPCE

In France, Article L.45 of the Code des postes et des communications électroniques (CPCE), accessible on Legifrance, grants AFNIC authority over national extensions (.fr, .re, etc.). Its guiding principles include:

• Compliance with public order;
• Non-infringement of third-party rights (trademarks, corporate names, etc.);
• Transparency and non-discrimination in domain allocation;
• An option for alternative dispute resolution methods (Syreli, PARL Expert) in case of conflict.

2.2. Intellectual Property Code (CPI)

The Intellectual Property Code (CPI) applies when a domain name conflicts with a prior IP right, such as a trademark. Articles L.713-2 and L.713-3 address trademark infringement, including unauthorized use of a distinctive sign that is confusingly similar or identical to an existing trademark. A domain name can be a “distinctive sign,” so using it without permission to market similar goods/services can constitute infringement if confusion is likely.

2.3. Article 1240 of the French Civil Code (ex 1382)

When you do not have a registered trademark, you may still sue an imitator under unfair competition principles (based on Article 1240 of the Civil Code). This requires showing a fault (imitation, confusion, parasitism) plus damage and a causal link. This approach is commonly used if two domains in the same business sector cause confusion or if one party is free-riding on another’s reputation.

3. Domain Name vs. Trademark: Earlier or Later Rights

DOMAIN NAME VS. EARLIER TRADEMARK

If there is an earlier trademark (valid and registered) and you register a domain name that is identical or highly similar for related goods/services, you risk trademark infringement. Courts worldwide consistently condemn domain owners who hijack a brand’s recognition or create confusion with an established mark.

DOMAIN NAME VS. LATER TRADEMARK

Conversely, if you have been actively using a domain name for years (even without a trademark registration), and someone else later decides to file a trademark that is identical or closely similar to your domain name, you can sometimes rely on your prior usage to challenge or invalidate that later trademark. You must demonstrate substantial and continuous usage, e.g., website archives, commercial documents, etc.

4. Key Steps to Protect and Secure Your Domain Name

4.1. Prior Checks and Searches

Before registering a domain name, it’s essential to perform:

• A WHOIS lookup to confirm availability and identify any existing owner;
• A review of trademark databases (e.g., INPI for France, EUIPO for the EU, WIPO internationally) to avoid conflicts;
• A check of commercial registers (e.g., Infogreffe in France) for similar corporate names.

This preliminary step reduces the risk of inadvertently infringing earlier rights.

4.2. Choosing the Right TLD

The .fr extension is pivotal in France, while .com remains a global favorite. New TLDs (nTLDs) like .tech, .shop, or .city can refine your branding strategy but be aware of cybersquatting if they aren’t also protected.

4.3. Technical and Administrative Security

Many disputes stem from negligence such as forgetting to renew a domain. We strongly recommend automatic renewal with your registrar and enabling registry lock or transfer lock. Limit domain management to trustworthy personnel so an employee can’t transfer ownership to their personal name or a competitor.

4.4. Registering a Trademark if Necessary

If your domain name is a crucial branding element, registering it as a trademark with the INPI (France) or under the Madrid system (international) significantly enhances protection. In any potential dispute, you can pursue a trademark infringement action rather than relying solely on unfair competition.

5. Unfair Competition Actions

Unfair competition is based on civil liability rules (cf. Article 1240 of the French Civil Code, formerly Article 1382). It’s particularly relevant when you don’t have a trademark registration, or the mark’s scope doesn’t fully apply to the domain conflict.

5.1. Elements to Prove

• Fault: e.g., imitation, creating confusion, or parasitism of your brand or domain;
• Damage: lost customers, reputational harm, or traffic diversion;
• Causation: the defendant’s conduct is the direct cause of the harm.

5.2. Illustrative Ruling

Paris High Court (TGI), January 10, 2017 (RG No. 15/07963):
The company operating exemple-luxe.com sued exempledeluxe.fr for unfair competition, alleging that the domain caused confusion among consumers. The court sided with the plaintiff, ordering the defendant to cease using the infringing domain and pay damages.

5.3. Advantages and Drawbacks

Unfair competition is flexible and doesn’t require showing a registered IP title like a trademark. However, proving actual harm (loss, confusion) can sometimes be more demanding than trademark infringement, which relies on the existence of a valid earlier mark to demonstrate a direct violation.

6. Trademark Infringement Actions

If you hold an earlier registered trademark, a trademark infringement lawsuit often provides a stronger remedy than unfair competition. You would invoke Articles L.713-2 and L.713-3 of the French IP Code. Infringement requires you to prove:

• A valid prior trademark;
• Unauthorized use of an identical or confusingly similar sign;
• A likelihood of confusion among the relevant public or (for famous marks) a risk of diluting the mark’s distinctiveness.

6.1. Proving Mark Existence

You need to show that your trademark is duly registered and not subject to invalidation or non-use cancellation. If the defendant challenges the trademark (arguing you haven’t used it for over five years, for instance), you may have to demonstrate genuine use to maintain your rights.

6.2. Example Ruling

Paris Court of Appeal, March 2, 2020 (RG No. 18/26345):
The domain marqueXYZ-online.com infringed the earlier trademark “MARQUEXYZ,” as it created a likelihood of confusion. The court ordered transfer of the domain and awarded damages to the trademark owner.

6.3. Scope of Application

Trademark infringement typically applies to commercial use of the domain name. If the domain is used non-commercially or in a completely different industry, confusion may be harder to establish. But for well-known (famous) marks, protection can extend to dissimilar goods/services if there is risk of tarnishment or dilution.

7. Why Monitor Your Domain Names?

Proactive monitoring of your domain(s) (or an entire domain portfolio) involves setting up alerts or scanning systems to foresee or detect:

• Impending expiration: so you can renew in time and avoid losing the domain to a third party;
• Cybersquatting: unscrupulous individuals may register near-identical domains (typosquatting, brandjacking);
• Brand abuse: if new domains incorporate your brand or a misleading segment thereof;
• Excessive resale prices: squatters may try to extort large sums if you let your domain lapse or if you need to buy it back quickly.

7.1. Services and Tools

Many registrars provide a “watch service” or specialized monitoring solutions.
You can also implement custom scripts or sign up for WHOIS alerts.
The AFNIC (the .fr registry) offers additional monitoring tools for .fr extension domains.

7.2. Recommended Practices

As part of a global strategy, consider:

• Centralized management: using a single or limited set of registrars to keep track of all your domains.
• Documentation: maintaining an up-to-date record (spreadsheet or dedicated software) of each domain’s expiration date, contact info, and relevant legal notes.
• Team training: ensuring your legal department and IT staff coordinate domain naming, renewals, and brand protection effectively.

8. Recovering an Expired or Third-Party Domain Name

Losing a domain name due to non-renewal or seeing it snatched by a malicious party can be challenging, but not always irreversible. Let’s explore the different methods to recover your domain name and how to keep it safe thereafter.

What Is Domain Recovery?

Domain recovery refers to the process of regaining or reacquiring a domain name that was previously held by someone else or had expired and returned to the public pool. Recovery can take the form of:

• Amiable negotiations: contacting the current registrant to purchase the domain directly;
• Auctions or backorder platforms: capturing domains in redemption phase or pending delete, often competing with other potential buyers;
• Extrajudicial proceedings (UDRP, Syreli) if the domain is used in bad faith and violates your rights;
• Judicial actions for unfair competition or infringement, if the domain is maliciously exploiting your brand or trade name.

Practical Steps to Recover an Expired Domain

1. Identify the domain’s current phase:
   • Grace period: the original owner may still renew;
   • Redemption period: domain is suspended but not publicly available;
   • Pending delete: domain is set to be released soon;
   • Released or auction phase: domain re-enters open registration or is up for bidding.
2. Select your approach:
   • Backorder via specialized platforms like SnapNames, Dropcatch, etc.;
   • Participate in any auction if the registrar holds a bidding process;
   • Register the domain directly if it’s fully released to the public.
3. Finalize acquisition:
   • Once recovered, set up DNS, verify WHOIS listing you as the registrant;
   • Enable auto-renew and domain lock to prevent losing it again.

How to Determine if a Domain Is Available for Recovery?

You can use dedicated tracking services such as Nom-domaine.fr or Domain Tools to check a domain’s actual status (active, redemption, pending delete). Some backorder services provide real-time status and will notify you once the domain is open for new registration or is in an auction phase.
In general, the domain is “available” if it is fully dropped and no longer in a grace or redemption period.

Note that popular or high-value domains can attract multiple bidders the moment they drop, so speed is essential to secure them.

9. Handling Disputes (UDRP, Syreli, Arbitration, Courts)

When a conflict arises — e.g., you believe someone else’s domain infringes your brand, or you’re accused of infringing a prior right — you have several options:

• Extrajudicial proceedings:
  • UDRP (Uniform Domain-Name Dispute-Resolution Policy): for gTLDs like .com, .net, .org. Typically handled by ICANN-approved dispute centers such as WIPO.

    Duration: about 2–3 months.

    Outcome: transfer or cancellation of the domain if bad faith, no legitimate interest, and confusing similarity are proven.

  • Syreli or PARL Expert with AFNIC for .fr.

    Decisions often within a few weeks to a few months.

    Remedy: domain transfer or deletion if the domain violates L.45 CPCE or third-party rights.

• Judicial options:
  • Unfair competition (Civil Code, art. 1240), if no trademark but confusion or parasitism is established;
  • Trademark infringement (CPI L.713-2, L.713-3), if you hold an earlier trademark;
  • Arbitration if a contract or prior agreement stipulates it.

According to WIPO, about 65–70% of UDRP cases result in the complainant’s favor, often leading to domain transfer. Meanwhile, AFNIC indicates that “several hundred” Syreli or PARL Expert cases occur each year for .fr, with the majority concluding in transfer or cancellation where the domain clearly infringes a prior right or is used in bad faith.

10. Some Statistics and Trends

For a broader view of the phenomenon, here are a few data points:

• Globally, about 350 million domains were registered across all TLDs by the end of 2022 (source: Verisign).
• An estimated 3–5% of these are so-called “speculative” registrations, often used for parking, reselling, or cybersquatting (figures vary by TLD).
• WIPO handled 5,500–6,000 UDRP domain disputes in 2022, reflecting a continuous rise year over year.
• In the .fr space, “several hundred” Syreli/PARL Expert complaints are filed annually, mostly due to brand or trade name conflicts.

This highlights a strong momentum: disputes are increasing as digitalization expands, making anticipation and prevention the best ways to mitigate risk.

11. Comprehensive FAQ

How Do I Prove Ownership of a Domain Name?

Typically, you check the WHOIS record. The official registrant is shown there (often under “Registrant” or “Owner”). If you appear as the registrant, that is legal proof of ownership. Additionally, keep invoices, emails with your registrar, and historical screenshots to strengthen evidence in case of dispute.

How Do I Protect a Domain Name During a Conflict?

Depending on the context:

• UDRP or Syreli extrajudicial proceedings: if you show the domain was registered in bad faith and lacks legitimate interest by the respondent, it can be transferred to you.
• Trademark infringement action: if you own a prior mark. Courts may order cessation of use, domain transfer, and damages.
• Unfair competition: to show confusion or parasitism under civil liability rules.
• Amiable negotiation: sometimes buying the domain from its current holder is the fastest solution.

What Is the Validity Condition for a Domain Name?

From a technical standpoint, the domain must meet syntax and length rules. Legally, it must not violate public policy or others’ prior rights (Article L.45 CPCE). AFNIC can revoke or transfer a .fr if those conditions are breached.

What Are the 3 Components of a Domain Name?

Typically, a domain name is structured as follows:

• Subdomain (e.g., “www” or any other custom subdomain)
• The second-level name (e.g., “example”)
• The TLD (e.g., “.fr,” “.com,” “.net”)

So “www.example.fr” is divided into “www” (subdomain), “example” (root), and “.fr” (extension).

What Happens If I Don’t Monitor My Domain Name?

Without regular monitoring, you could:

• Accidentally let it expire and lose it to a competitor or cybersquatter;
• Remain unaware of near-identical domain registrations (typosquatting, brandjacking);
• Face stolen traffic or reputational harm;
• Pay exorbitant fees if forced to buy it back or engage in litigation.

How Do I Know If a Domain Name Is Expired or About to Expire?

Check the WHOIS record for the domain’s expiration date. Certain services (like ExpiredDomains.net) list domains nearing expiration or in redemption. Also, many registrars provide reminders or notifications for upcoming renewals.

How Long Does a UDRP Case Typically Last?

On average, 2–3 months. WIPO (the World Intellectual Property Organization) handles most disputes. The panel reviews the complainant’s and the respondent’s statements. Where the complainant proves bad faith and no legitimate interest, the panel typically orders transfer or cancellation of the domain.

How Many Cases Does WIPO Handle Each Year?

WIPO deals with 5,500–6,000 domain disputes annually under the UDRP. This figure has been steadily increasing, reflecting the expansion of digital commerce and domain speculation.

What If My .fr Domain Is Being Used by Someone Else?

You can:

• File a complaint under Syreli (handled by AFNIC) or PARL Expert for a quick extrajudicial resolution.
• Consider a court action based on unfair competition or infringement if a trademark is involved.

Procedures typically evaluate whether the domain violates L.45 CPCE or prior rights. If so, they can order a transfer or deletion.

12. Conclusion and Contact

This guide has taken you through the **complex realm** of domain name protection and recovery, covering:

• Legal frameworks in France (CPCE, IP Code) and relevant guidelines for TLDs;
• Practical strategies (monitoring, locks, multiple TLD coverage) to stay proactive;
• Legal actions (unfair competition, trademark infringement), along with extrajudicial options (UDRP, Syreli);
• Domain recovery (through auctions, backorder services, or negotiations) when a domain expires or is held by a third party;
• Statistics illustrating how domain disputes keep rising globally.

The key is a proactive approach: verifying availability, implementing robust security measures, and staying alert via monitoring. Engaging a specialized law firm can be invaluable for drafting an effective UDRP complaint, managing a Syreli dispute, litigating in court, or generally structuring your online portfolio’s legal defenses.

Looking for customized support?
Contact Dreyfus now to safeguard your domain names effectively.
Our team provides deep expertise in domain name law, trademark law, and IP strategy, ensuring your digital assets are fully protected and your rights enforced.

Afnic (Association Française pour le Nommage Internet en Coopération), which is responsible for managing domain names ending in .fr, has issued its decision in the dispute between the Syndicat des Vins Côtes de Provence and the company AOC ET COMPANIES. What is at stake? The domain name <cotesdeprovence.fr>, registered since 2004 by AOC ET COMPANIES. The Syndicat des Vins, the organization that protects and manages the “Côtes de Provence” appellation d’origine contrôlée (AOC), contested this ownership, arguing that its registration and use infringed the rights guaranteed by law on this renowned wine appellation.

After analyzing the arguments of both parties, Afnic ruled in favor of the Syndicate and ordered the transfer of the domain name to its benefit. A look back at a landmark decision that illustrates the importance of protecting geographical indications on the Internet.

A domain name at the heart of the battle

The dispute concerned the website <cotesdeprovence.fr>, registered on May 17, 2004 by the company AOC ET COMPANIES, which specializes in IT services and website creation. For almost 20 years, this domain name was not used. But in March 2024, the Côtes de Provence Wine Syndicate took steps to recover this domain, believing that it constituted misappropriation of a protected AOC.

According to the Syndicate, the “Côtes de Provence” AOC, recognized since 1977 and enjoying a strong reputation in France and internationally, had to be protected against any unauthorized commercial or private use. In particular, it invoked Article L. 45-2 of the French Postal and Electronic Communications Code, which allows a domain name to be challenged in the event of infringement of rights protected by law, such as a geographical indication or trademark.

In April 2024, the Syndicate sent a formal notice to the Holder requesting the free transfer of the domain. In response, the latter refused, explaining that he was the legitimate owner and indicating that he was only willing to transfer it as part of a commercial transaction.

Faced with this refusal, the Syndicat referred the matter to Afnic via the PARL EXPERT procedure, an arbitration mechanism dedicated to disputes over .fr domain names.

The parties’ arguments

The Côtes de Provence Wine Syndicate: an infringement of legally guaranteed rights

The Syndicate argued that the registration and renewal of the domain name <cotesdeprovence.fr>:

• Infringed upon the “Côtes de Provence” AOC, protected by the Rural Code and Maritime Fisheries (article L. 643-1).
• Were likely to weaken or divert the reputation of this AOC by preventing the legitimate rights holders from using the domain name.
• Were the result of a registration in bad faith, since the holder had no connection with the wine sector and had never used it to promote an activity related to the appellation.
• Were motivated by a purely speculative interest, as the Holder had offered to sell the domain for financial compensation.

The Holder, AOC ET COMPANIES: a desire to preserve its rights

For its part, the company AOC ET COMPANIES rejected these accusations, stating that:

• It had been the legitimate owner of the domain since 2004, having acquired it entirely legally according to the “first come, first served” rule applied by Afnic.
• The acronym “AOC” in its trade name did not refer to “Appellations d’Origine Contrôlée” (Controlled Designations of Origin), but to its slogan “[Surname] Optimizes your Trade and Etc.”
• The domain name did not infringe the rights of the Syndicate, as it had never been used to promote wines or a competing product.
• The sale of the domain was not a sign of bad faith, but a direct consequence of the Syndicate’s efforts to claim its transfer.

The Expert’s analysis: abusive private use of the domain name

The Expert appointed by Afnic examined the arguments and evidence of both parties. Several factors weighed in favor of the Syndicate:

• The protected nature of the “Côtes de Provence” AOC: the Expert recognized that this appellation, governed by an official decree of 1977, benefited from legal protection and could not be used without justification.
• The perfect identity between the domain name and the AOC: the domain <cotesdeprovence.fr> completely reflected the appellation, which risked creating confusion.
• The absence of legitimate exploitation: the Holder had never used the domain for 20 years and had no connection with the world of wine.
• The sale of the estate: the fact of having offered the domain name for sale and of promoting it on a dedicated site was perceived as an attempt at speculation, which constitutes evidence of bad faith according to article R. 20-44-46 of the CPCE.

Thus, the Expert considered that the registration and use of the domain infringed the rights guaranteed by law and that it should be transferred to the Côtes de Provence Wine Syndicate.

A decision in favor of the protection of geographical indications

On September 10, 2024, Afnic confirmed the Expert’s decision and ordered the transfer of the domain name <cotesdeprovence.fr> to the Syndicat des Vins Côtes de Provence.

The decision was enforced after a period of 15 days, during which time the Holder may still initiate legal proceedings if they so wish.

This case illustrates the importance of protecting geographical indications on the Internet. Domain names, as strategic communication and marketing tools, cannot be monopolized for speculative purposes when they include designations protected by law.

Nevertheless, this decision raises questions, because it calls into question the ownership of a domain name registered for 20 years. Although foreclosure does not apply in this case, it creates real legal uncertainty for domain name holders. In this case, this situation can be explained by the lack of use of the domain name during this entire period. In general, establishing a system of limitation for this type of procedure would be appropriate in order to guarantee legal certainty.

Dreyfus Law Firm, with its expertise in intellectual property and domain name protection, assists its clients in defending their rights against the risks of cybersquatting and infringement of their IP rights. We act in UDRP disputes, analyzing each case from the perspective of trademark law and regulations specific to protected geographical indications (PGI) and controlled designation of origin (CDO). Thanks to our experience in the strategic management of domain name portfolios, we implement tailored solutions to anticipate, monitor and defend the digital assets of our clients, whether they are producers, professional associations or companies in the wine and food industry.

FAQ

1. Can a registered designation of origin (AOC) be protected on the Internet?

Yes. An AOC is a distinctive sign protected by law. The registration of a domain name containing an AOC without legitimate justification may be contested by the organization in charge of its defense.

2. What can be done if a domain name contains an AOC without authorization?

The AOC defense organization may take legal action or resort to extrajudicial procedures such as PARL EXPERT with Afnic for .fr domain names, or UDRP for international extensions (.com, .org, etc.).

3. How does Afnic’s PARL EXPERT procedure work?

PARL EXPERT is a fast, out-of-court procedure for resolving disputes relating to .fr domain names. An expert examines the arguments of the parties and can decide on the transfer or deletion of the disputed domain name.

4. Is it possible to register a domain name for the sole purpose of reselling it?

No. Speculative registration of a domain name, without the intention of exploiting it but with the aim of reselling it at a high price, may be considered as use in bad faith and give rise to a dispute.

5. Can a domain name corresponding to an AOC be used by a company outside the sector?

The use of a domain name corresponding to an AOC by a company that has no connection with the sector concerned may be contested if it risks weakening or misappropriating the reputation of the appellation.

6. What criteria can be used to prove bad faith in the registration of a domain name?

Bad faith can be established if the domain holder:

• Has no legitimate interest in registering it,
• Seeks to profit from the reputation of an AOC or a trademark,
• Offers the domain for sale after being contacted by a right holder,
• Does not actively exploit it for a long period of time.

7. Can an AOC be considered as public property on the Internet?

No. AOCs are protected by legislation and cannot be freely used by third parties without authorization. They benefit from a specific legal framework that prevents their abusive appropriation.

8. Can an organization that defends an AOC recover a domain name without financial compensation?

Yes. If the organization demonstrates that the registration of the domain name infringes the AOC, Afnic or a competent authority may order its transfer without any obligation to compensate the original holder.

Dreyfus Law Firm works in partnership with a global network of lawyers specializing in intellectual property.

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