New AFNIC Mediation Procedure: Fast and Free Dispute Resolution for Domain Name Holders

Written by Dreyfus31/08/2023

New AFNIC Mediation Procedure: Fast and Free Dispute Resolution for Domain Name Holders

On July 3, 2023, AFNIC launched a mediation procedure to resolve disputes between right holders and domain name holders. The aim of this innovative measure is to offer parties a free, amicable means of resolving disputes, limited, however, to domain names managed by AFNIC (“.fr”).

The main role of AFNIC (Association Française pour le Nommage Internet en Coopération) is to manage the domain name registry in France (.fr).

What Is Afnic’s New Mediation Procedure?

The AFNIC mediation procedure is a free service set up to settle disputes relating to “.fr” domain names. It aims to provide a rapid and effective solution to disputes that may arise between domain name holders, registrars, and third parties. Mediation is based on an amicable process, which means that it takes place without recourse to the courts, enabling the parties involved to reach an agreement without incurring additional costs.

The procedure is simple and accessible to all parties concerned. To initiate mediation, one of the parties must submit a request to AFNIC, providing information on the dispute in question, the domain names involved, and the reasons for the dispute. Once the request has been received, AFNIC can appoint a mediator to deal with the dispute. The mediator must be neutral and impartial.

Once this has been done, the mediator will contact the parties to hear their arguments and help them find common ground. This is a confidential process, usually conducted online. The significant advantage of this approach is that the dispute can be resolved without the parties having to face each other physically.

What Are the Advantages of Mediation?

AFNIC mediation offers a number of advantages for parties involved in a domain name dispute:

Firstly, the mediation procedure enables the parties to reduce their costs considerably, especially when compared with other, much more costly procedures.

Secondly, unlike legal proceedings, which can take months or even years, AFNIC mediation offers a rapid resolution, usually within a few weeks. This is also a real advantage for the parties, especially in view of the long delays associated with the usual procedures.

The mediation process is also confidential, preserving the reputation and confidentiality of the parties involved. The remote procedure facilitates interaction between the parties, who are not obliged to be in the same room or in direct communication to resolve the dispute.

Mediation also enables the parties to find creative, customized solutions that meet their specific needs. In this respect, it is a flexible measure.

Finally, it is a method of resolution that encourages cooperation and communication between the parties, thus facilitating an amicable resolution of the dispute.

AFNIC’s free mediation procedure is a valuable resource for holders of <.fr> domain names faced with disputes. It offers a rapid, confidential alternative to legal proceedings, enabling parties to resolve their disputes amicably. If you’re involved in a .fr domain name dispute, don’t hesitate to consider AFNIC mediation as an effective solution for reaching a fair and rapid agreement. You can well imagine its value in cases where the parties are willing to find an amicable solution… that’s what mediation is all about!

For expert guidance on AFNIC’s mediation process, contact Dreyfus today for a free consultation to secure your online presence.

Legal Watch : A public figure’s name constitutes a right that can be the basis for UDRP proceedings

Written by Dreyfus23/12/2022

Less than a month after the 2022 presidential elections, a WIPO Arbitration and Mediation Center’s Expert rendered a decision regarding a domain name reproducing the name of the re-elected candidate Emmanuel Macron.

The domain name in dispute, <emmanuel-macron.com>, had been registered on the 3^rd October 2015, during the time when Emmanuel Macron was still the Minister of Economy, Industry, and Digital Technology. Far from merely imitating the future president’s name, this litigious domain name would redirect to this website, which in fact, was the official website of the adverse polemist candidate during the 2022 presidential election. In this respect, we note that the domain name did not redirect to content related to Mr. Eric Zemmour before 2022 (according to an Archive.org search).

The complainant logically argues in their complaint that they must fulfill the requirements of paragraph 4(a) of the Policy, where it is specified that there are three cumulative elements necessary to claim the transfer of the disputed domain name. These are :

♦ The similarity of the domain with a right of the complainant.

♦ The lack of right or legitimate interest in the domain name on the respondent’s part.
♦ The proof of bad faith registration and use by the registrant.

The interest of this case stands within two main points : the assessment of the similarity between the disputed domain name and the complainant’s prior rights, and the characterization of the registrant’s legitimate interest.

The complainant presents his arguments based on the existence of non-registered rights to the trademark “EMMANUEL MACRON”, a concept no longer existing under French law (except for well-known trademarks). If, by the simple fact that a domain name contains a family name that is not sufficient enough to justify an interest in bringing an action, it is important to note that under the Policy, the Experts’ assessment varies depending on the use of the family name made by the complainant. Here, the domain name was reproducing both the first name and the family name of Mr. Macron.

The Expert considers that when a person’s name is used as a trademark-like identifier in commerce, a complainant may be able to establish unregistered rights from that name to succeed in the UDRP proceedings. In this case, the Expert explains and outlines that the complainant’s use of the name “Emmanuel Macron” is not limited to his political activities but also extends to a commercial use being in this case, the publication and sale of books. Therefore, from the commercial use of his name, the complainant satisfies the requirements of the Expert. The Expert in retrospect acknowledges him as holding a non-registered trademark right. Therefore, the identity of the signs in comparison is established.

As trademark specialists, we would have appreciated a more puristic demonstration. In France, trademark rights cannot be acquired through simple use without registration (except for well known trademarks). In this case, it was up to the complainant to demonstrate that he had acquired trademark rights under Common Law or that the name “EMMANUEL MACRON” was a well-known trademark for certain goods and/or services.

We assume that the case was urgent and that the Expert wanted to do the right thing in this unacceptable situation. The complainant was fortunate that the case was assigned to an Expert who wanted to achieve a fair decision at the expense of trademark laws.

The Expert then raises the question of legitimate non-commercial or fair use of the domain name, according to paragraph 4(c)(iii) of the Policy.

In this case, the disputed domain name, redirects to the website of another opposing political figure. Therefore, the use of this domain name does not seem commercial and therefore, could more likely fall into the scope being freedom of speech.

However, previous experts have ruled that the right to legitimate criticism does not necessarily extend to the registration or use of a domain name which is identical to a trademark or a right, when it could create a risk of confusion through impersonation. Therefore, the use of the name EMMANUEL MACRON to redirect to his opponent’s website, Eric Zemmour, would incur a risk of implicit affiliation with the complainant. This would also constitute, on the part of the respondent, an attempt to misleadingly divert Internet users, especially since the respondent cannot claim to be known or be recognized under the name “EMMANUEL MACRON”.

As a result, and according to paragraph 4 (c) (iii) of the Policy, the Expert has determined and decided that it cannot therefore, be considered as a legitimate non-commercial or fair use status. In conclusion, the registration and use in bad faith were also acknowledged for the same reasons. As the domain name was registered at the end of 2015, the panel observed that the complainant had already acquired significant notoriety as a public figure in France. Moreover, the redirection to the website of a political opponent was likely to mislead Internet users and disrupt the complainant’s activities.

In retrospect, this case could have been subject to much harsher and serious consequences, as the intent seemed to take the form of manipulating an electorate in the run up to the presidential election, rather than taking advantage for commercial purposes.

The Culturespaces company must return the domain names and social network content to the city of Nîmes

Written by Dreyfus15/09/2022

Nîmes On the 16^th of May 2022, the Council of State (Conseil d’Etat) handed down a decision in its 7th and 2nd chambers following the appeal lodged by the company ‘Culturespaces’ regarding the interim order issued on December 13^th, 2021, by the Nîmes Administrative Court.

Culturespaces operated under a public service delegation, for the touristic and cultural exploitation of several sites in the city of Nîmes: the Nîmes arenas, the Maison Carrée and the Magne Tower. In order to do this, Culturespaces registered domain names for these sites belonging to the city of Nîmes.

At the end of the public service concession agreement, the company refused to return the intangible assets to the city of Nîmes. The city then referred the matter to the interim proceedings judge who ruled in favour of Culturespaces.

The Council of State ruled that the intangible assets, notably the domain names and social network content, were necessary for the operation of the public service and that they were assets likely to be qualified as assets returned from the concession.

The Council of State therefore ordered Culturespaces to return all the intangible assets necessary for the operation of the public service to the municipality of Nîmes.

No cybersquatting in the event of uncertainty regarding the transfer of a trademark

Written by Dreyfus04/08/2022

veille (WIPO, Arbitration and Mediation Center, Case No. D2022-0770, 11 May 2022, BH Vigny, BH Hotels, BH Balzac v. Paulo Ferreira, MBI Holdings)

In the decision held on May 11th, 2022, companies BH Vigny, BH Hotels, BH Balzac, all belonging to the same group, saw their UDRP complaint get rejected for lack of precision on an ongoing legal procedure.

The dispute involved five different domain names, namely <amarantebeaumanoir.com>, <amarantecannes.com>, <amarantechampselysees.com>, <hotelbalzac.com> and <hoteldevigny.com>, each of which referred to a French luxury hotel. The domain names were registered by Respondent, MBI Holdings. The evidence in the case shows that the director of MBI Holdings was also the director of two other entities: JJW Luxury Hotels and Amarante.

The domain names were registered while JJW Luxury Hotels and Amarante still owned the hotels in question. JJW Luxury Hotels owned the Hotel Balzac and the Hotel de Vigny, while Amarante managed the Amarante Champs-Elysées, Amarante Beau Manoir and Amarante Cannes.

The case is complex as it takes place in the context of a takeover between JJW Luxury Hotels and Amarante and Complainants. Several hotels in France had been acquired by the Complainants, including the above-mentioned hotels. Shortly before the UDRP complaint was filed, the three Complainants, members of the same group, had initiated not only a business transfer agreement, but also a trademark assignment agreement with the Respondent. According to the Complainants, the effect of this agreement was to grant full ownership of the trademarks and domain names associated with the aforementioned hotels.

However, Respondent argued that, contrary to the Complainants’ assertion, the transfer of the businesses and associated trademarks had not yet become permanent. In fact, a dispute was pending before the French court. Similarly, it appeared that certain contractual provisions provided for the retention of certain company funds in an escrow account. These provisions therefore suggested that the transfer of assets were not complete, final or irreversible.

Paragraph 4(a) of the UDRP requires three elements to be met in order to claim the transfer of a disputed domain name: similarity of the domain name to a prior right of the Complainant, evidence of the absence of a right or legitimate interest of the domain name’s current holder, and evidence of bad faith registration and use of the domain name by the current holder.

The first element is in default, according to the Expert, who however moderates his statement. The question of ownership of rights is raised, as the Respondent claims that the rights to trademarks and domain names have not yet been validly transferred. The Expert asserts that the evidence provided by the Complainants is not sufficient in order to determine whether the transfer of ownership is actually effective. In fact, Complainants did not provide any information on the ongoing legal proceedings, nor did he mention them in his complaint.

Understandably, the second requirement of paragraph 4(a) is not specifically discussed by the Expert, as it is essentially linked to the first. If Complainants are not able to demonstrate that the transfer of rights has taken place, they cannot prove that the Respondent, who previously held the rights, no longer does so.

Finally, the third requirement also poses a challenge for the Expert. In light of the context, it seems unlikely that the domain names were registered in bad faith, as the Respondent appeared to demonstrate a legitimate registration and use of the five domain names. Again, the lack of evidence does not allow the Panel to conclude that the bad faith test is met.

In summary, the texts are applied strictly and it is quite easy to understand the Expert’s position in this case. The solution could undoubtedly have been quite different if Complainants had communicated about the ongoing legal proceedings and submitted evidence that would have demonstrated the Respondent’s bad faith. According to the Expert, this case is not a classic case of cybersquatting, but rather a concurrent dispute to legal proceedings already underway.

ICANN: Next round of new gTLDs unlikely to happen before 2023

Written by Dreyfus29/07/2022

ICANN On February 18, 2021, ICANN’s Generic Name Support Organization (gNSO) Board voted to approve the “New Generic Top Level Domain (gTLD) Subsequent Procedures Policy Development Process Final Report.

This Final Report contains certain statements, recommendations, and implementation guidelines, which are defined as “Outputs”. It includes statements about existing policy, recommendations for new policy, and various guidelines on how best to implement it. It addresses some 40 topics that cover all aspects of new gTLD deployment, such as how the deployment should proceed, under what criteria, etc.

On March 24, 2021, this Final Report was transmitted to the ICANN Board of Directors, which must now review the Outputs to determine whether the recommendations are in the best interests of ICANN and its community.

To accomplish this, the Committee requested an “Operational Design Phase (ODP)“, launched in late 2021 and expected to last ten months. It should be transparent to the public and regular reports should be issued . This timeframe could be extended if unforeseen circumstances were to arise.

Therefore, it is very likely that the next round of new gTLDs will be postponed to 2023. All the more so as some of the recommendations raise questions, particularly with regard to the absence of reinforced protection measures against abuse of the Domain Name System (DNS).

Domain name monitoring remains a major issue

Written by Dreyfus26/07/2022

WIPO, Arbitration and Mediation Center, Case No. D2022-0593, April 15th 2022, Photomaton v. Domains By Proxy, LLC / Ehren Schaiberger

In the decision made on April 15^th, 2022, Photomaton had its UDRP complaint rejected, that concerned a domain name of which it was previously a holder of.

This case is likely to attract a lot of attention as it illustrates the importance of regular monitoring of domain names and other industrial property rights that are subject to renewal.

The case is concerned with the domain name <photomaton.com>, which, according to the evidence, was held by the company Photomaton from the 16^th of January 2015 until January 2020. The situation may seem far-fetched, but it appears that the Complainant did not renew the domain name on time. The Respondent, Mega Domains, is a domainer who registers and puts domain names up for sale. At the time of this case, it held more than 10,000 domain names.

Respondent became the owner of the <photomaton.com> domain name when it expired via a so-called “Drop Catching” system. The logic suggests that the registration was done properly and that the Respondent had nothing to worry about, however the rules of the UDRP procedure are a little more complex.

What about a domainer who registers a domain name with a third party’s trademark that is not registered in the country where the domainer is located?

Complainant argued that it was the owner of French, EU and international trademark “PHOTOMATON” as well as the domain names <photomaton.fr> and <photomaton.be>. Paragraph 4(a) of the UDRP provides that a combination of three elements are required to be met in order to claim the transfer of a disputed domain name: the existence of Complainant’s prior right that is confusingly similar to the domain name, evidence of absence of a right or legitimate interest of the domain name’s current holder and evidence of registration and use in bad faith of the domain name by the current holder.

Obviously, the first condition left no room for doubt for the Expert: the name was identical to the “PHOTOMATON” trademarks held by Complainant, as the gTLD “.com” was not considered in this comparison.

The second condition, on the other hand, was subject to more detailed consideration. Complainant argued that it had not given permission to Respondent to register and use the domain name in question and that Respondent was not known by the domain name or any of its derivatives, nor did it own any trademarks relating to the domain name. The Respondent argued that the term “Photomaton” was a descriptive term that he could register and resell at his convenience.

The Expert, far from stopping at a biased parallel between the English term “photo booth” and the term “photomaton”, affirmed by referring to an INPI decision, stating that the term “photomaton” was not considered descriptive in both English and French. In support of his argument, he added that even if the term had become restrictive, the domain name must be used genuinely, or at least clearly intended for such use, in relation to the dictionary definition and not for the purpose of trading in the trademark rights of others. This was not the case here, as Respondent had offered the domain name for sale on the ‘Dan’ platform for 37,000 US dollars, a price set on the basis of the notoriety of the term.

The third condition was the most controversial and the one that led the Complaint to fail. Complainant claimed that its trademark was an invented word, deemed distinctive by INPI case law, and it is very famous, at least in France, where it has been used for over 100 years. It was therefore unlikely that Respondent had registered the disputed domain name without knowing the Complainant’s trademark. However, Complainant had not provided any evidence of the use of its brand or its scope in the United States, where Respondent was located.

Meanwhile, Respondent claimed that it did not know Complainant at the time of registration of the disputed domain name. Respondent added that his business consisted of the registration and resale of domain names that he considered descriptive. Respondent also provided evidence of the registration of numerous names containing the word “photo” or ending in “on”.

The Panel reflecting on the facts, concluded that it was clear that Complainant did not abandon its trademark, even if it did not renew the domain name, therefore a subsequent purchaser could not use it in a way that would conflict with its trademark right. The complexity of the case lies in the fact that Respondent argued that more than 100,000 domain names expire every day and that to avoid potential disputes, the latter used keywords that are likely to be rejected for registration, which included many trademarks. However, Respondent claimed to be using the databases of the US Trademark Office, where the mark “PHOTOMATON” was not registered. The Panel responded by stating that by offering the brand for sale on a worldwide scale, based solely on a US database, did not seem adequate in light of the database provided by WIPO.

The Panel concluded that the Complainant’s name was not registered as a trademark highlighting two points: firstly, a Google search made at the time of the registration of the domain name by Respondent did not clearly show Complainant’s trademark, but the geographical points where the photo booths were installed. Secondly, the Expert considered that Respondent had nonetheless undertaken numerous endeavours to ensure that the disputed domain name was not the subject of a trademark right. The Panel noted that failure to use a worldwide trademark database might not be excused in the future.

This is an unforeseen decision, which demonstrates the extent to which management of a domain name portfolio remains a major issue for companies of all sizes. So far, the <photomaton.com> domain name is still for sale on the Dan.com website for 37,000 US dollars.

Legal Watch : THE UDRP PROCEDURE

Written by Dreyfus22/03/2022

The UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

LEGAL WATCH : THE NAME PARISTECH.ORG

Written by Dreyfus18/03/2022

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

Legal Watch: Two people file a complaint regarding the same domain name

Written by Dreyfus17/03/2022

When two people file a complaint regarding the same domain name, the domain name’s transfer isn’t necessarily granted to the trademark rights’ owner

The Uniform Domain Name Dispute Resolution Policy specifies in point 4) a) that the relevant disputes involve those where a domain name is “identical or confusingly similar to a trademark in which the complainant has rights”.

This is the case when the domain name has been registered and used in bad faith, when the registrant has no rights or legitimate interests and when the domain name registered by the domain name registrant is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Recently, the WIPO Arbitration and Mediation Center considered that, although the applicant had previous trademark rights, the transfer of the disputed domain name shall happen on behalf of the other complainants.

The complainants in this case were Victoria and David Beckham.

The first complainant, Victoria Beckham, a former member of the Spice Girls, is specialized in haute couture and commercialises clothes under her name on the website “www.victoriabeckham.com”. The trademark “VICTORIA BECKHAM” is notorious, especially in the United-Kingdom: it was designated as Designer Brand of the Year in 2011.

The second complainant is David Beckham, renowned for his soccer career, as well as for his professional collaborations with major brands.

He owns several trademarks, invoked in support of the complaint and in particular some registered in the United States “BECKHAM” No. 3342223, dated 20 November 2007, renewed, relating inter alia to clothing products and the trademark “BECKHAM” No. 4208454, dated 18 September 2021 in class 3, which includes perfumes. Thus, the trademarks cited in support of the complaint belong solely to him.

The Beckhams discovered the domain name <usbeckham.com> registered on 8 July 2020, after the registration of Mr Beckham’s trademarks. This domain name linked to a page selling clothing, handbags, shoes and accessories. The site was titled “BECKHAM® Official Online Boutique” and featured the header “BECKHAM” in a font similar to Victoria Beckham’s site. It also had a “Perfume” tab, which redirected to the <genewus.com> website, selling perfumes but also a range of swimwear bearing the name “Victoria Beck”.

Firstly, the expert observed that both complainants shared the same name BECKHAM, for which David Beckham had acquired trademark protection for perfumes and clothing. Hereby, the expert considered the consolidation of the complainants well-founded.
According to the expert the disputed domain name may generate a risk of confusion with the earlier trademarks as it incorporates the word BECKHAM.
Concerning the legitimate interest and the potential rights of the defendant, the complainants argue that they have not given any authorization to the defendant to use their name and that the latter held no rights on the sign “BECKHAM”.
The use of the domain name is confusing for products in competition with those of the complainants and have a title with the symbol ® implying that the respondent is the owner of the trademark “BECKHAM”. The term “Official” also suggests that the website is official. This demonstrates the respondent’s lack of good faith: the expert therefore considers that she has no right nor legitimate interest in the domain name.
Furthermore, with regard to the registration and use in bad faith, the expert considers that the applicants are very famous and that the defendant could not have been unaware of the applicants’ trademarks “BECKHAM”, given that she lived in London and in view of her interest in “high fashion” as mentioned on her website. Moreover, her name is not “Beckham”. However, this name has some significance in the world of high fashion through the applicants’ trademarks. The expert therefore considers that the defendant necessarily registered and used the domain name in bad faith.
Therefore, the complaint was accepted and the domain name was transferred to the first complainant, Victoria Beckham.

This ruling is interesting since most of the decision’s reasoning is based on Mr. Beckham’s trademarks. The trademarks in question were protected in particular for “clothing” and “perfumes”. Those same products are found on the disputed website.

A research reveals that there are several “VICTORIA BECKHAM” trademarks, but at first sight, they do not belong to Mrs. Beckham herself, but to her company. Although the company bears the same name, it was not a complainant in this litigation.

The consolidation of complainants makes it possible to consider that “2 become 1″ for the purposes of the complaint. Anyone of the complainants can obtain the disputed domain name whereas it is not decisive which one of them is mentioned as the actual trademark owner in the complaint.

Perhaps Victoria Beckham could have argued that she has common law rights regarding the name “BECKHAM”. However, these rights would have been in competition with those of her company.

(WIPO Arbitration and Mediation Center, Case n°D2021-1841, Victoria Beckham, David Beckham v. Contact Privacy Inc. Customer 1247653581/ Cynthia Panford)

Metaverse: is it necessary to register specific trademarks for protection?

Written by Dreyfus11/03/2022

*Image generated by DALL-E 3, Microsoft Version

The metaverse -a parallel virtual world which is booming in the Web 3.0 era- has become an unavoidable topic. This fictional world will combine prospectively and simultaneously virtual reality (VR), augmented reality (AR), blockchain, crypto-currencies, social networks, etc. Many companies are already planning to do business in this world following the company’s digital transition.

As a result, trademark applications covering products and services related to “digital virtual objects” have been multiplying since the end of 2021.

But how to effectively protect this new activity that calls for a whole new lexicon?

1.The metaverse, a new world for new ambitions?

In a few words, the metaverse can be defined as a fabricated virtual universe -mixing the words “meta” and “universe”, to designate a meta-universe in which social interactions would be extended and digitized. It seems to be directly inspired by the 1992 novel “Snow Crash” (“Le Samourai virtuel” in French) by Neal Stephenson.

This parallel digital environment embodies a new way to explore innovative and ambitious projects from a different perspective, before they take concrete shape in the actual world.

As an example, Aglet created its own range of sneakers, the “TELGAs”, after launching it as a digital collection for online games. The collection is also available on the OpenSea platform, alongside brands such as Nike and Adidas, who have stepped up to virtual collections in the form of Non-Fungible Tokens (NFTs).

NFTs, whose transactions are mostly hosted on the Ethereum blockchain, are essential components of the metaverse. This digital asset category, which is distinct from crypto-currencies such as Bitcoin and Ether, allows for authentic and unforgeable certification of the ownership of one of these virtual digital objects offered for sale in the metaverse.

The metaverse follows on from social networks and will undoubtedly allow companies to establish a strong online presence, beyond the operation of a traditional website.

Whether the metaverse is a trend that will last and become anchored in our culture is uncertain, though many large companies have already taken the plunge.

Before venturing into the metaverse, it is necessary to register specific trademarks, adapted to the goods and services of the metaverse. This will ensure efficient protection against infringement and will enhance the value of the company’s brand assets. In this respect, it is important to draft an appropriate wording for the trademark.

2.How to design an adequate and optimal protection?

When launching an activity into the metaverse, the definition of the goods and services should be careful considered as the crucial element of a trademark is its wording above all. The filing process for a trademark application with the INPI, EUIPO, or any other national industrial property office, will indeed guarantee, to some extent, a monopoly on goods and services determined. This will confer also a commercial value to the trademark, once it is registered by an industrial property office.

As a reminder, once a trademark application has been filed, it is impossible to add classes of goods and services and to add any additional good or service, nor to add goods or services. Only a modification in the sense of a restriction of the wording will be considered.

The most relevant classes, which will contribute to the wording, are classes 9 and 41.

Class 9 allows for NFT coverage, although the product may not be accepted as such. More explanatory wording will be required. For example, one can target “downloadable digital products, i.e. digital objects created using blockchain technology”. These goods can be of all kinds: clothing, works of art, etc.

Class 41 covers the components of entertainment. In this respect, MMORPGs, which are defined as interactive games, which by their nature and concordance are closely associated with the metaverse, could be covered in class 41.

When a virtual trademark is to be exploited through points of sale, services class 35 seems unavoidable in order to include, among other things, “retail store services for virtual goods”.

In a complementary vision, it will then be necessary to think of designating the corresponding goods in the classes that classically cover them.

3.Virtual trademarks registered in various sectors

In early February 2022, Pumpernickel Associates, LLC filed a trademark application for “PANERAVERSE” No. 97251535 with the USPTO. This filing, initiated for virtual food and beverage products, NFTs and the ability to purchase real products in the virtual world, demonstrates a definite willingness by the American company to deploy these outlets in the metaverse.

McDonald’s has also filed trademark applications (No. 97253179; No. 97253170; No. 97253159) for “the operation of a virtual restaurant offering real and virtual products” and for “the operating a virtual restaurant online featuring home delivery”. In addition, the U.S. fast food chain also plans to obtain a trademark for “on-line actual and virtual concerts and other virtual events” and other entertainment services for a virtual McCafe (No. 97253767; No. 97253361; No. 97253336).

These are not the only trademark applications filed at this time; Facebook and Nike pioneered this trend, followed by luxury, textile, cosmetics and perfume brands. L’Oréal, for example, has filed several registration applications for perfume brands from its portfolio, in their digital version, with the French National Institute of Industrial Property (INPI)

4.Conceptual considerations

In light of this unprecedented craze around the metaverse, one might wonder whether these immaterial goods, whose projected use is exclusively intended for virtual exploitation, should not come under a new particular category of products, not defined to date under the Nice Classification.

The addition of an ad hoc class dedicated to these virtual goods and services seems complex insofar as many of them could overlap with already existing products and services. The list could be very long.

In any case, drafting a trademark for the metaverse requires a meticulous definition of the goods and services concerned.

The Nice Classification, despite the successive trademark filings made since November 2021, does not include for the moment, in its explanatory notes or product suggestions, any reference to goods and/or services closely related to the metaverse or NFTs. Perhaps it will do so shortly in view of the developments encountered.

What will be the boundaries between the metaverse and the actual world? The question is a structuring one for trademark law and competition law. The European Commissioner Margrethe Vestager and the president of the US antitrust authority, Lina Khan, are wondering about “the right time to put in place competition rules in this emerging sector”.

Dreyfus accompany you in the protection of your brands in the metaverse era and to draft with you a wording of goods and services adapted to your activity.

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Metaverse: is it necessary to register specific trademarks for protection?

1.The metaverse, a new world for new ambitions?

2.How to design an adequate and optimal protection?

3.Virtual trademarks registered in various sectors

4.Conceptual considerations

See also…

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