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29-09-2017 » gTLD and ccTLD ADR procedures : an efficient tool against pirates

Extra-judicial proceedings can be initiated by a trademark owner against a domain name registered fraudulently, to obtain its withdrawal or its transfer through a decision rendered by one or several panellists. Such proceedings were notably developed by the WIPO Arbitration and Mediation Centre for gTLDs, but also exist at national levels for ccTLDs.

One of the most common situations where such proceedings are launched is when companies have registered domain names containing renowned trademarks pointing to websites where counterfeit products bearing the trademarks can be ordered.

In a decision rendered on September 11, 2017, the administrative panel of WIPO agreed with the complainant that a single complaint can be directed against multiple domain names, even though their registrants had different names and addresses, and ordered the transfer of the contested domain names to the complainant.

In this case, a complaint had been filed against six domain names containing the famous French designer Pierre Hardy’s name, such as <cheappierrehardy.online>, <pierrehardyoutlet.online>, <pierre-hardy.store> or <pierrehardye.store>.

Those six domain names were resolving to active websites offering for sale counterfeits bearing the trademark Pierre Hardy. All these domain names had been registered by Chinese companies, under different names and different addresses.

Therefore, two important issues were to be decided on: the language of the proceedings and the admissibility of filing of a single complaint against these different domain names. Here, the WIPO Administrative Panel made a remarkable assessment on these two specific points.

According to paragraph 11(a) of the UDRP rules; “the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

In this case, the Registration Agreement was in Chinese. However, the Panel considered that the disputed domain names contained English words and that the content of the websites linked to the contested domain names, was also in English. In view of those elements the Panel considered that the respondent was deemed to have an adequate level of understanding of the English language, and that the proceedings should be in English.

Turning now to the consolidation of multiple respondents and domain names in one complaint, the Panel recalled that Paragraph 3(c) of the UDRP Rules forbid the filing of a complaint directed against several respondents. However, reference was also made to section 4.11.2, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third edition: “Where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and the consolidation would be fair and equitable to all parties”.

To do so, the Panel shall take into account evidence regarding the circumstances, such as the similarities in the registrants’ identities or their contact information.

In the present case, the main issue consisted in the fact that the domain name registrars’ names and their addresses were different, whereas a complaint must normally only be directed against domain names that are registered in the name of the same owner.

However, the Panel noticed that the registrar address of the six domain names in question was initially the same and that the address in relation to the domain names <pierre-hardy.store> and <pierrehardye.store> changed after the complainant requested to add them to the complaint. Moreover, the Panel took into account the facts that: the administrative, billing and technical contacts relating to the six relevant domain names were the same, and the content of the websites was essentially similar in that they all offered sales of apparently counterfeit products of the complainant.

Thus, the Panel concluded that the complainant had successfully demonstrated that the six domain names were more likely than not the subject of the same ownership and control, and decided that consolidation of the case was appropriate. A similar decision had been issued on May 10, 2010, by the WIPO Administrative Panel in Speedo Holdings BV v. Programmer (WIPO, D2010-0281), where the consolidation was justified by reference to common control exercised over the disputed domain names : the administrative contacts, the email addresses and the postal addresses were the same.

In the present situation, the concept of “common control” was broadly interpreted to resist the registrants’ attempts to bypass the complainant’s request. Interestingly, the Panel decision looks justified by the necessity to counter the malicious behaviour of companies which aim to freely commercialize counterfeits online via numerous domain names and web sites. This decision shows that the UDRP rules can adapt to answer the needs of trademark owners to fight against counterfeiters’ ingenuity.

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