NEWS

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04-09-2019

 

Cybersquatting of the name of a local authority

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This is the first time that the Court of Cassation has ruled on a case of cybersquatting against a local authority. It is not new, however, that the courts have to hear disputes consisting of the appropriation of domain names corresponding to trademarks, thus violating the rights of trademark holders. 3194-bb3b-136bad5cf58d_     _cc781905-5cde-3194- bb3b-136bad5cf58d_

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Confirming, in a judgment of principle, a judgment rendered by the Versailles Court of Appeal on March 14, 2017, the cassation judges consider that the applicant of domain names using the name and trademark of a local authority had no no legitimate interest.

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In this case, in 2004, the filing company registered the domain names " saoneetloire.fr " and "_cc781905-5cde-3194-bb3b-136bad5cfb et-loire.fr ”. In August 2011, the Saône-et-Loire department registered the semi-figurative mark " Saône-et-Loire le département ". In June 2012, the filing company renewed the aforementioned domain names and registered the domain name “ saône-et-loire.fr ”. The department opposed the allocation for the benefit of the applicant of the domain name " saône-et-loire.fr ", as well as that of the two other previously registered domain names, requesting that the litigious signs be transferred to it.

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In this decision, the Court of Cassation recalls, first of all, the meaning of the rule provided for in Article L.45-2 of the Post and Electronic Communications Code (CPCE), according to which a domain name must not infringe an earlier trademark, except to demonstrate that the applicant has a legitimate interest and is acting in good faith. 

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After noting the existence of a risk of confusion between the litigious signs, the Court of Cassation considers that the trial judges have supremely held that the filing company had no legitimate interest since it "_cc781905-5cde -3194-bb3b-136bad5cf58d_did not demonstrate exploitation of the disputed domain names ”.

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The legitimate interest referred to in the decision is defined in Article R. 20-44-46 of the CPCE, in the form of a non-exhaustive list, which provides in particular that the legitimate interest of the applicant resides in the fact " of using this domain name, or an identical or related name, in the context of an offer of goods or services, or to be able to demonstrate that he has prepared for it ". The applicant, who did not justify any use of the disputed domain names to offer services related to the territories of the department of Saône-et-Loire, therefore has no legitimate interest in registering them. .

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This solution, in accordance with traditional case law, thus demonstrates a certain balance between the protection of intellectual property rights and the freedom of enterprise.

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Carole COUSON-WARLOP, associate lawyer Cabinet Artlex, and Clémence OTEKPO trainee lawyer Cabinet Artlex

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# Intellectual property, trademark law, domain names, cybersquatting, local authority, legitimate interest, use, exploitation

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