1 August 2011Jurisdiction reportsAurélia Marie

Domain names in France: a new legal regime

A new legal regime for domain names has been operating in France since July 1, 2011.

The new provisions that relate to the status of top level domain names (TLD) in French national territories have been implemented in a law adopted on March 22, 2011. It introduces various provisions that are intended to implement EU regulations regarding health, labour and electronic communications (Official Journal of March 23, 2011).

These provisions replace 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 innovative, but they are clearer than the previous version.

They also respond to the requirements set by the Conseil Constitutionnel (a body that inter alia controls the conformity of laws with the French constitution) for (i) freedom of enterprise and communication, and (ii) balance with intellectual property rights. A sole registration office will be in charge of attributing and managing ‘.fr’ domain names.

The ‘first to file’ rule remains effective for a limited but renewable time period. Service providers maintain their ‘middleman’ status between the registration office and the applicant. The law maintains the rule that an applicant bears the burden of whether to choose to register a domain name, as a domain name will be granted on the basis of the applicant’s declaration (Article 45§1).

"Even though the possibility to appeal a registration office decision is specified, it is not made clear whether it is possible to lodge an action directly before the courts against the reserva tion of a domain name infringing an intellectual property right."

The text clearly indicates that a domain name must neither cause damage to the public nor infringe intellectual property rights or personality rights, and it must not be “identical or related to a ‘collectivité territoriale’ (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 (Article 45§2).

Infringing these provisions comes with consequences. 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 the domain name to that person so that they can profit from it”. The office is requested to put an inter partes procedure in place that can alternatively allow for a third party/referee to weigh in.

The third party/referee must be selected in a way that is 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 interest and the lack of legitimate interest (locus standi).

Additionally, if the domain name owner provides the office with inaccurate or incorrect information, including data related to the owner’s identity, then the office will be entitled to delete the domain name. As of December 31, 2011, the register will be open to physical persons living within the EU as well as corporations that are headquartered within one of the EU member states.

A decree, still to be adopted, will set out the terms of these provisions. While waiting for the designation of the registration office by the minister in charge of telecommunications, the Association Française pour le Nommage Internet en Coopération remains the competent authority.

These provisions are essentially a repeat of the previous system for .fr domain names.

Unfortunately, the provisions do not clarify the regime that applies to them or the relationship that binds them to other distinctive signs. It is regrettable 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 interest or the existence of a legitimate interest to act (locus standi), which have yet to be defined.

It is also regrettable that the relationship between the registration office and the courts is not more explicit. Even though the possibility to appeal a registration office decision 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 clarify these points.

Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at: amarie@bdl-ip.com

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