Hit the dot


The introduction of new gTLDs has brought with it novel questions about how to decide whether a domain name is identical or confusingly similar to another’s trademark. Nathalie Dreyfus of Dreyfus reports

The new gTLD .paris has been available to everyone since 2 December 2014, making it the first gTLD in France to be specifically dedicated to a city.

While it has become difficult to stand out on the web with now classic domain names such as .fr or .com, .paris represents a great opportunity for those who wish to gain more visibility.

Indeed, choosing a domain name is a very important step as this choice greatly impacts on the visibility of the website. An original and relevant domain name can in this way allow a company to get closer to its target market.

The new gTLD .paris attaches to the domain name all that the city of Paris is known for: quality, elegance and innovation throughout the world.

Its many attractions have not gone unnoticed. By the end of 2014, more than 2,000 companies had already purchased a domain name ending with .paris, especially those in the luxury, gastronomy and innovation sectors. These figures rapidly increased and according to statistics from May 2015, there are now more than 18,000 domain names ending with .paris.

The distinctive features of .paris

The launch of .paris was actually on 9 September 2014. During the first 63 calendar days, registration was only open to five categories of applicants. This allowed those with specific rights to register their domain names in .paris before general availability.

Among these privileged applicants, the first category was for holders, licensees or assignees of trademarks validated by the Trademark Clearinghouse (TMCH).

The second category concerned competent public authorities within the Ile-de-France region, namely: international, national, regional, local and municipal authorities, as well as government services. This was when the domain name toureiffel.paris was registered.

As for the third category, it related to holders or assignees of local trademarks that were not validated by the TMCH, as well as holders of geographical indications recognised by international treaties, EU regulations or French law.

Finally, the fourth and fifth categories regrouped respectively priority applications concerning names of not-for-profit companies or legal entities, and non-priority applications not relating to domain names already reserved, registered or assigned by the end of the limited registration period.

The distinctive feature of .paris, however, is that one has to belong to the community of Paris to qualify for registration. Indeed, under Article 2.1.1 of the registration policy of .paris, in order to register for or to renew a domain name ending with .paris, one should be a natural or legal person, established, in what could be considered as good faith, in the Paris region, at the time of, as well as after, registration.

The applicant must be able to prove that it resides in the Paris region, or that it carries out professional, personal, commercial or cultural activities there, or it must be able to prove a direct or indirect link to the Paris region.

This requirement should not be taken lightly, because Article 9 of this registration policy specifies that “the registry operator has the right to reject, revoke or annul, at any time, any application for a domain name, or any related registration, if it is found that the applicant has not satisfied the eligibility requirements in whole or in part”.

Interestingly, this requirement is exclusive to .paris. Indeed, applicants for the .london or .tokyo gTLDs, for example, do not have to prove their prefence in the region.

Disputes surrounding .paris

Since .paris is still very new, there has been little in the way of case law, although there have been out-of-court decisions, and various disputes, including the cases of match.paris, briochedoree.paris, laposte.paris and eleven.paris.

Danone was able to obtain the suspension of the domain name groupedanone.paris on 5 June 2015, in a Uniform Rapid Suspension (URS) proceeding at the National Arbitration Forum (No 1618861). In this case, the fact that the domain name included the entire name of the company and the Danone trademark and associated it to the city of Paris, which is precisely where the company was founded, served to show that the applicant knew of the company and that it was acting in bad faith.

In another case, held this time before the World Intellectual Property Organization Arbitration and Mediation Center, Société du Figaro obtained the transfer of the domain names le-figaro.paris and lefigaro.paris (D2015-0094). In this case, the applicant had tried to prove that the term ‘Figaro’ was a common word used to designate an opera character. But when linked to Paris, which is where the Figaro opera company is headquartered, it became clear that the applicant had registered and used this domain name in bad faith. The fact that the ‘Figaro’ trademark was linked to Paris demonstrated the identity of the domain name with the trademark and therefore, the likelihood of confusion.

The same argument relating to the head office of the holder of the trademark was raised in URS proceedings on 31 March 2015 (FA1503001608773) concerning lasamaritaine.paris: “It is inconceivable to this panel that the respondent was unaware of the complainant and its trademark rights when it registered the disputed domain name which is identical to the complainant’s La Samaritaine trademark in a gTLD that refers to the city in which the complainant is based.”

The .paris gTLD may, where there is a dispute, constitute an additional argument to demonstrate a domain name applicant’s bad faith where the holder of the trademark whose rights have been infringed is situated in Paris.

However, this is not always the case and experts do not yet agree on whether new gTLDs should be considered during the comparative examination of a domain name and a trademark in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings.

When UDRP proceedings were instituted in 1999, TLDs were extremely limited and were restricted to the original five and 247 country-code TLDs, which corresponded to countries. Experts have therefore rapidly established a principle according to which TLDs must not be taken into consideration while assessing the identity or the similarity between the domain name and the trademark in question. It was generally accepted that the TLD should not be taken into consideration when comparing the signs due to its exclusively technical nature and it being an inherent part of the domain name system.

However, this principle is now being questioned in the wake of the new gTLD programme. In the first UDRP proceeding following the introduction of the new gTLDs, experts had to determine whether the domain name canyon.bike was identical or similar to the ‘Canyon’ trademark, registered for bicycles (D2014-0206).

On this occasion, the experts pondered whether, in the context of new gTLDs, it is correct to take into consideration the TLD when assessing the identity or the similarity of the name with the trademark, although, in this case, they did not directly address this question, given that the domain name consisted of the ‘Canyon’ trademark in full in such a way that the identity was clear.

In another case, this time a dispute concerning the domain names statoil.holdings and statoil.venture (D2014-0369), the experts examined both cases: namely, the comparison of the signs without considering the gTLDs, and the comparisons with the gTLDs.

However, the experts again declined to comment on whether it was relevant to consider them since in both cases, the signs were similar in such a way that the requirement in Paragraph 4 (a)(i) of the UDRP principles was fulfilled.

In a case concerning the domain name zionsbank.holdings (D2014-0269), the experts examined at length the relevance of taking new gTLDs into account. In that case, however, it was considered that the term “holdings” at the end of the domain name at dispute made it impossible to establish that the domain name was identical or similar to the ‘Zions Bank’ trademark.

Nevertheless, they specified that, depending on the case at hand, the examination of the gTLD could impact on the analysis of the requirement set out in 4(a)(i).

Several URS proceedings relating to new gTLDs have revealed the experts’ willingness to take into account the new gTLD in examining the likelihood of confusion between the domain name in dispute and the trademark.

In this light, a 1 April 2014 case regarding the registration of the domain name dior.clothing (FA140201546033) is noteworthy. In this case, the experts considered that: “In addition, the disputed domain name is registered in a gTLD (.clothing) which explicitly refers to the business that the complainant is active in. Hence, it is apparent that the respondent had the complainant in mind when registering the disputed domain name and that the respondent registered the domain name either with the purpose of selling it to the complainant or in order to prevent the complainant from reflecting its trademark in a corresponding domain name.” As a result, the new gTLD .clothing was taken into consideration during the comparative examination of the domain name and the trademark.

Similarly, an 11 June 2014 case, where the issue was the registration of the domain name parissaint-germain.club (FA1406001563159), the experts said: “The domain name, parissaint-germain.club is identical to the complainant’s ‘Paris Saint Germain’ marks since it includes the exact wording of the registered trademarks. The generic word ‘club’ which serves as a gTLD does not distinguish the domain name. Furthermore, it rather increases risk of confusion since the complainant’s main activity is maintaining a football club.”

To conclude, it is impossible for the time being to state that new gTLDs should be taken into consideration during the examination of the identical or similar nature of domain names in relation to trademarks during UDRP or URS proceedings. Indeed, the experts seem reluctant to enunciate such a principle and have until now, especially in UDRP proceedings, not been clear on the issue of whether and to what extent these gTLDs should be taken into consideration. This is not surprising since the new gTLDs, publicly accessible since 2012, represent a significant evolution from the classic TLDs around which case law has been constructed. The situation is now expected to evolve.
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