Cabinet Beau de Loménie
The new provisions related to the status of TLD domain names regarding French national territory have been implemented in a Law, which has a wider scope, adopted on 22 March 2011 and which concerns various provisions implementing EU regulations regarding health, labour and electronic communications (Official Journal of 23 March 2011).
These provisions aim at replacing the previous article L. 45 of the « Code des Postes et Télécommunications » (Post and Telecommunications Code) which was declared contrary to the French Constitution, and are composed of nine articles.
The provisions are not really innovative, however they are clearer than their previous version and respond to the requirements set up by the « Conseil Constitutionnel » (an organ which inter alia controls the conformity of Laws with the French Constitution) in relation to the respect of (i) the freedoms of enterprise and of communication and of (ii) their balance with intellectual property rights.
Therefore, as before, a sole registration Office will be in charge of attributing and managing “.fr” domain names and the “first to file” rule remains effective, for a limited time period which can be renewed. Service providers keep their status of “middlemen”, between the Office and the applicant.
Moreover, it is upheld that the applicant bears the burden of the choice to register a domain name, as this domain name will be granted on the basis of the applicant’s declaration (Article 45§1).
The text clearly indicates that a domain name must neither cause damage to the public, nor infringe intellectual property rights or personality rights, and must not be “identical or related to a “collectivité territorial” (i.e. a local authority such as a city or a county), to an institution or to a local or national public service” unless the applicant has a legitimate interest (locus standi) and is bona fide (Art. 45§2).
Infringing those provisions has consequences as Article L.45.6 states that “any person who has an interest to act (locus standi) may request the registration Office to delete a domain name or to transfer it to its own profit”. The Office is requested to put in place an inter partes procedure, which can alternatively allow for a third party/referee to weigh in. The third party/referee is chosen in conditions that must be transparent, non-discriminatory and made public. The decisions issued by the Office can be appealed before the Courts.
It has to be noted however, that the Law states that regulations will define the elements establishing the lack of bona fide and the lack of legitimate interest (locus standi).
In addition, if the owner of the domain name provides the Office with inaccurate or wrong information, including data related to his identification, then the Office will be entitled to delete the domain name.
As from 31 December 2011, the Register will be open to physical persons living on the EU territory as well as to corporations having their headquarters or their main Office on the territory of one of the EU member States.
A decree, taken by the “Conseil d’Etat”, will set up the terms of these provisions. While waiting for the designation of the registration Office by the Minister in charge of telecommunications, the AFNIC remains competent.
These provisions essentially repeat the already existing functioning of “.fr” domain names. Unfortunately, the provisions do not clarify the regime which applies to them, or the relationship that binds them to other distinctive signs. It is to be regretted that the notion of “likelihood of confusion”, which is essential as far as distinctive signs are concerned, disappears in favour of the notions of bona fide or the existence of a legitimate interest to act (locus standi), which have yet to be defined. It is also to be regretted that the relationships between the registration Office and the Courts are not more explicit. Thus, even though the possibility to appeal a decision of the registration Office is specified, it is not made clear whether it is possible to lodge an action directly before the Courts against the reservation of a domain name infringing an intellectual property right. Future Case Law will have to render those points clearer.