Legals aspects of domain names in France
Lord Bayar | 15.10.2007 19:38
A domain name is judged according to its proper meaning (mark, action, etc.) and according to the associated activity (i.e. a web site) and as we are in a capitalistic society, every thing is property of some one, the domain name too.
The big domain name battle, the only one linked to them, is of course the cybersquatting. Without staying too much on this point, we have just to recall that the domain name is not mandatory at all on the Internet, from a technical point of view, this is only a more ergonomic interface permitting to reach services (HTTP, ftp, email, etc.). Theses conflicts, exclusively linked to this technology can only be related to mark/label conflict and are usually purely capitalistic/commercial. One exception to this reflexion, the use of a domain name as a media, where the only concern is freedom of speech, for example, the URL: "
http://www.call-to-an-illegal-action.com".
The big domain name battle, the only one linked to them, is of course the cybersquatting. Without staying too much on this point, we have just to recall that the domain name is not mandatory at all on the Internet, from a technical point of view, this is only a more ergonomic interface permitting to reach services (HTTP, ftp, email, etc.). Theses conflicts, exclusively linked to this technology can only be related to mark/label conflict and are usually purely capitalistic/commercial. One exception to this reflexion, the use of a domain name as a media, where the only concern is freedom of speech, for example, the URL: "
http://www.call-to-an-illegal-action.com".
Cybersquatting
==============
Although this problematic is purely mercantile and ridiculous for everybody that is not a capitalist, it is advertised by the WIPO.
This organisation fixed a conflict resolution procedure for good people. This procedure lists the elements to give as proof of the dispute and how to answer to a such list. This procedure being formal and accepted by the "big market actors" is of course now a reference as there is no specific law, this is then a good introduction to the domain name discussion.
Here quotes from the "Uniform Domain Name Dispute Resolution Policy":
. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Juridical power of the registration organisation
================================================
In France, the progressive abandonment of the democracy that has already transformed in the law the hosting companies into police auxiliary, is doing the same with the domain name registration organisation. On the contrary, theses last ones have now a quasi juridical power more than a simple collaboration obligation.
Theses obligations are in the "modified post & electronics communications code" as announced in the "Official Diary" (Journal Officiel) of the 8/02/2007 (NOR: INDI0609188D).
Free translation (non juridically verified of course, from a juridical point of view, it is a fuzzy translation) of two articles related to our subject ::
Art. R. 20-44-36 :
The designation of a office could be linked with prescriptions on :
" - the rules of choosing and registering domain names;
" - the criteria of acceptation to receive a domain name;
" - the terms defining where the registration is not authorized, more precisely taking in account their illicit character or against the public order, or because the domain name is reserved to the office or to the state;
" - the procedure to access the services of the registration office;
" - the mandatory dispositions to permit the consultation between the whole people involved by the office decision, more precisely the registration offices, the domain name requester and the Internet users;
" - the setup of a conflict resolution procedure;
" - the requirement on permanence, on service quality and reliability;
" - the setup of a system permitting to everybody to advertise the office that there is domain name that is against the public order or having a illicit character.
" Art. R. 20-44-49. − The offices can suppress or transfer domain name at will when the owner does not conform to the acceptation criteria decided at the office creation or when the identity data given by the owner are inaccurate.
" Each office setup in order to reach this goal a procedure compound at least the send of an alert to the owner in order to warn him and give him the possibility to take the appropriates actions.
" The offices must block, suppress or transfer, according to the case, domain names:
" - when the offices note that a registration has been done violating the fixed rules by the present section of the post and electronics communications code;
" - when applying a decision made by a juridical or extra-juridical procedure resolving conflict.
Reflexions
==========
From the UDPR procedure and this law, three elements could be retained:
1. Identification ;
2. link between the domain name and the conflict;
3. good faith.
The identification obligation is the most concern, this obligation is clearly stated in the quoted law ::
"The offices can suppress or transfer domain name at will when (...) the
identity data given by the owner are inaccurate.
This statement written, at least, must the office verify the accuracy of the identity data, verify identity (that's mean give them more power) or must the office just prove that it just do everything it could do to verify the identity.
If the question about the transmission of theses identification data to the police is closed by others laws, what about the transmission to other organisation or people ?
For the first question, we just have to remember the following case "Paris courthouse, third chamber, first section, 16/02/2007" where an Internet provider have been considered guilty because the identification data that it possessed was not by nature data permitting to identity the web page author, hosted freely (the data were something like that : Tintin, living in Moulinsar with Haddock captain). The host failed to comply its legal obligation to detain and keep the identification data about the people it is hosting the produced content. At this time, people were asking if the same obligation could be applied to the domain name registration office, the answer is in the quoted law.
In other word, the owner of a domain name registered in France who have an evidently fuzzy WHOIS risks to loose his domain name in France.
The WHOIS scheme permit sometimes to hide some personals information, is an office guarantor of you anonymity ? An order of the 21/06/2007 emitted by the Versailles court authorized the ".fr" registration office to cooperate and transmit personal data and block conflicting domain name, before any judgement (on an purely trademark history).
But as the web site "legalis.net" innocently notes::
This order is not necessary, the selling company could have been happy using a order on request, delivered by a unique judge without requiring the presence of the parties. This office receive one or two such request weekly and deliver the requested elements.
In a case where an company have be forced in 2007 by this office for cybersquatting to loose a lot of domain names, using the WHOIS data has proof against it, the director Xavier Buck made a interesting analysis::
(...) you are thinking that the publication on the AFNIC WHOIS of your agent, Mr. Laurent N., give him a juridical quality of owner of the domain names. Your reasoning lead to give to the AFNIC Whois a juridical nature that it does not possess. In fact, the AFNIC WHOIS cannot be considered as an irrefragable proof of the juridical ownership of a domain name. And, there have to be possible to bring the contrary proof with the "holder" in the AFNIC Whois. The AFNIC knew roles of the EuroDNS company rule and its agent, because there were a email thread months before the block of the domain names. In addition, we have the proof that the juridical owner is not our agent, and on the EuroDNS whois, it is clearly written who is the juridical owner of the domain names we registered."
This approach would permit to consider that the owner of a domain name could have a link with a structure without representing it.
It permits to discuss about the link between the activity pointed by the domain name and its owner.
Recently, the Nanterre court (15Th chamber, in a 15/03/2007 trial) judged that the fact redirecting to an illegal website from a website using a domain name containing a licensed mark (trademark or not) could engage the mark owner responsibility. The case was about a on-line poker website (illegal in France). A such thing could have been possible verifying that only the non-french users would have the right to connect to this website, but, apparently the protection scheme were not accurate.
This judgement seems to tell that if I use a domain name using a mark, registered or not, that means I obtained the permission to do so (a license, as the mark owner, or the people that considering himself as are authorizing me to use it). Then, the mark owner become responsible of the activity pointed by the domain name.
If we shortcut a step, that could be the same to tell that the domain name owner could be responsible for the content pointed by this domain name. We are not here yet.
And that is when the good faith arrives.
On this subject, we note again how all this thing is following a business logic. The WIPO in a decision (D2006-0250) by Warwick Smith, David Sorkin and Pierre-Yves Gautier rejected the claim of a french tour: Jet-Tour.
A South-Korean company, using the same name, owns the "jettour.com" domain name, unacceptable thing for Jet-Tour made in France. Their request has been rejected because the requester was not able to prove that the defendant think about the requester mark when it registered the domain name because defendant mark was known in South-Korea, place of action of the defendant that does not act in Europe, and was not able to prove that defendant activity was advertisement and that the defendant was bad faith registering an English generic name. At least, the fact the defendant hides its identity from the Whois is not sufficient to define the bad faith.
==============
Although this problematic is purely mercantile and ridiculous for everybody that is not a capitalist, it is advertised by the WIPO.
This organisation fixed a conflict resolution procedure for good people. This procedure lists the elements to give as proof of the dispute and how to answer to a such list. This procedure being formal and accepted by the "big market actors" is of course now a reference as there is no specific law, this is then a good introduction to the domain name discussion.
Here quotes from the "Uniform Domain Name Dispute Resolution Policy":
. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Juridical power of the registration organisation
================================================
In France, the progressive abandonment of the democracy that has already transformed in the law the hosting companies into police auxiliary, is doing the same with the domain name registration organisation. On the contrary, theses last ones have now a quasi juridical power more than a simple collaboration obligation.
Theses obligations are in the "modified post & electronics communications code" as announced in the "Official Diary" (Journal Officiel) of the 8/02/2007 (NOR: INDI0609188D).
Free translation (non juridically verified of course, from a juridical point of view, it is a fuzzy translation) of two articles related to our subject ::
Art. R. 20-44-36 :
The designation of a office could be linked with prescriptions on :
" - the rules of choosing and registering domain names;
" - the criteria of acceptation to receive a domain name;
" - the terms defining where the registration is not authorized, more precisely taking in account their illicit character or against the public order, or because the domain name is reserved to the office or to the state;
" - the procedure to access the services of the registration office;
" - the mandatory dispositions to permit the consultation between the whole people involved by the office decision, more precisely the registration offices, the domain name requester and the Internet users;
" - the setup of a conflict resolution procedure;
" - the requirement on permanence, on service quality and reliability;
" - the setup of a system permitting to everybody to advertise the office that there is domain name that is against the public order or having a illicit character.
" Art. R. 20-44-49. − The offices can suppress or transfer domain name at will when the owner does not conform to the acceptation criteria decided at the office creation or when the identity data given by the owner are inaccurate.
" Each office setup in order to reach this goal a procedure compound at least the send of an alert to the owner in order to warn him and give him the possibility to take the appropriates actions.
" The offices must block, suppress or transfer, according to the case, domain names:
" - when the offices note that a registration has been done violating the fixed rules by the present section of the post and electronics communications code;
" - when applying a decision made by a juridical or extra-juridical procedure resolving conflict.
Reflexions
==========
From the UDPR procedure and this law, three elements could be retained:
1. Identification ;
2. link between the domain name and the conflict;
3. good faith.
The identification obligation is the most concern, this obligation is clearly stated in the quoted law ::
"The offices can suppress or transfer domain name at will when (...) the
identity data given by the owner are inaccurate.
This statement written, at least, must the office verify the accuracy of the identity data, verify identity (that's mean give them more power) or must the office just prove that it just do everything it could do to verify the identity.
If the question about the transmission of theses identification data to the police is closed by others laws, what about the transmission to other organisation or people ?
For the first question, we just have to remember the following case "Paris courthouse, third chamber, first section, 16/02/2007" where an Internet provider have been considered guilty because the identification data that it possessed was not by nature data permitting to identity the web page author, hosted freely (the data were something like that : Tintin, living in Moulinsar with Haddock captain). The host failed to comply its legal obligation to detain and keep the identification data about the people it is hosting the produced content. At this time, people were asking if the same obligation could be applied to the domain name registration office, the answer is in the quoted law.
In other word, the owner of a domain name registered in France who have an evidently fuzzy WHOIS risks to loose his domain name in France.
The WHOIS scheme permit sometimes to hide some personals information, is an office guarantor of you anonymity ? An order of the 21/06/2007 emitted by the Versailles court authorized the ".fr" registration office to cooperate and transmit personal data and block conflicting domain name, before any judgement (on an purely trademark history).
But as the web site "legalis.net" innocently notes::
This order is not necessary, the selling company could have been happy using a order on request, delivered by a unique judge without requiring the presence of the parties. This office receive one or two such request weekly and deliver the requested elements.
In a case where an company have be forced in 2007 by this office for cybersquatting to loose a lot of domain names, using the WHOIS data has proof against it, the director Xavier Buck made a interesting analysis::
(...) you are thinking that the publication on the AFNIC WHOIS of your agent, Mr. Laurent N., give him a juridical quality of owner of the domain names. Your reasoning lead to give to the AFNIC Whois a juridical nature that it does not possess. In fact, the AFNIC WHOIS cannot be considered as an irrefragable proof of the juridical ownership of a domain name. And, there have to be possible to bring the contrary proof with the "holder" in the AFNIC Whois. The AFNIC knew roles of the EuroDNS company rule and its agent, because there were a email thread months before the block of the domain names. In addition, we have the proof that the juridical owner is not our agent, and on the EuroDNS whois, it is clearly written who is the juridical owner of the domain names we registered."
This approach would permit to consider that the owner of a domain name could have a link with a structure without representing it.
It permits to discuss about the link between the activity pointed by the domain name and its owner.
Recently, the Nanterre court (15Th chamber, in a 15/03/2007 trial) judged that the fact redirecting to an illegal website from a website using a domain name containing a licensed mark (trademark or not) could engage the mark owner responsibility. The case was about a on-line poker website (illegal in France). A such thing could have been possible verifying that only the non-french users would have the right to connect to this website, but, apparently the protection scheme were not accurate.
This judgement seems to tell that if I use a domain name using a mark, registered or not, that means I obtained the permission to do so (a license, as the mark owner, or the people that considering himself as are authorizing me to use it). Then, the mark owner become responsible of the activity pointed by the domain name.
If we shortcut a step, that could be the same to tell that the domain name owner could be responsible for the content pointed by this domain name. We are not here yet.
And that is when the good faith arrives.
On this subject, we note again how all this thing is following a business logic. The WIPO in a decision (D2006-0250) by Warwick Smith, David Sorkin and Pierre-Yves Gautier rejected the claim of a french tour: Jet-Tour.
A South-Korean company, using the same name, owns the "jettour.com" domain name, unacceptable thing for Jet-Tour made in France. Their request has been rejected because the requester was not able to prove that the defendant think about the requester mark when it registered the domain name because defendant mark was known in South-Korea, place of action of the defendant that does not act in Europe, and was not able to prove that defendant activity was advertisement and that the defendant was bad faith registering an English generic name. At least, the fact the defendant hides its identity from the Whois is not sufficient to define the bad faith.
Lord Bayar