Cabinet Beau de Loménie
The introduction of the new French legal regime for domain names provided for by the Law of March 22, 2011, was partially postponed up until the adoption of its related Decree (see our Flash News of April 2011). The said Decree was expected on July 1st but was finally published only on August 3, 2011. By a press release of the same day, the AFNIC - the present .fr and .re registration Office - declared that it would proceed with the examination of the 6158 pending applications received since July 1st, 2011, in order to examine them as of August 29.
The provisions of the law, which were deferred up until the publication of the Decree, were those relating to the designation of the registration Office, the modalities of designation of the intermediate registration Offices between the applicant and the Office, but also and foremost the definition of the notions of “lack of legitimate interest to act (locus standi)” and of “mala fide use”, on which the registration Office can base its refusal of registration or renewal of a domain name, either because it infringes Intellectual Property or personality Rights, or because it is identical or related to the name of the French Republic, a “collectivité territorial” (i.e. a local authority such as a city or a county), an institution or a local or national public service (2° and 3° of Art. L.45-2).
Both notions are now defined in Article R.20-44-43 of the Decree. In fact, the draftsmen chose to refer to the legitimate interest to act (locus standi), rather than referring to the lack thereof, nevertheless providing a non-exhaustive list of examples of cases where locus standi exist. The legitimate interest to act (locus standi) therefore is “notably (…) the fact for the applicant or the domain name owner (i) to use this domain name or an identical or related name, in view of offering goods or services, or to be able to prove the preparations therefor, (ii) to be known under a name identical or related to that domain name, even in the absence of rights over that name, (iii) to make a non-commercial use of the domain name or of a related name without the will to deceive the consumer or to cause detriment to the repute of a name on which a right is recognized or established.”
As concerns the notion of lack of bona fide, it includes “notably (…) the fact (i) to have obtained or applied for the registration of that name mainly in view of selling it, renting it or transferring it, by whichever mean, to a public service structure, or to a local authority, or to the owner of an identical or related name on which a right is recognized, and not to effectively use it, (ii) to have obtained or applied for the registration of a domain name mainly in order to cause detriment to the repute of the owner of a legitimate interest or of a right recognized over that name or on a related name, or of a product or service related to that name by the consumer, (iii) to have obtained or applied for the registration of a domain name mainly in order to benefit from the renown of the owner of a legitimate interest or of a right recognized over that name or a related name, or of that of a product or service related to that name, by creating confusion in the mind of the consumer.”
It is now up to the Office to define more precisely one and the other of these notions.
It is remarkable that neither the Law nor the Decree refers to the criteria of existence of prior rights or likelihood of confusion or to similarity between goods or services, but it must there again be stressed that the Law did not provide any definition of the legal nature of the domain name and, thus, of the relationship that it must have with other distinctive signs. Therefore, although good faith is ineffective as a defence as regards counterfeiting, that criterion seems essential in the process of granting domain names in France.
The AFNIC remains competent for first level Domain names, at least until a Regulation from the Ministre chargé des communications électroniques (Minister in charge of electronic communications) is adopted after public consultation. It is not excluded that different Offices will be designated for the French overseas department and territories extensions.
The Domain Names Dispute Resolutions procedures which have been suspended since April 15, 2011, for the WIPO Arbitration and Mediation Center, and since May 15, 2011, for the AFNIC (PREDEC) continue to be suspended. Although the designation of one or several competent Offices should only be a question of weeks, the discussions in connexion with these procedures could still last for several months.
As a result, for the time being, litigation related to deleting or transferring a .fr or .re domain name (Art. L.45-6) can only be lodged: with the Arbitration and Mediation Center of Paris (if the adverse party consents), or before the Courts (without such consent).