France jurisdiction report: Many names, one owner
Such proceedings were notably developed by the World Intellectual Property Organization Arbitration and Mediation Center for generic top-level domains, but also exist at national levels for country-code TLDs.
One of the most common situations where such proceedings are launched is where someone registers domain names containing renowned trademarks pointing to websites where counterfeit products bearing the trademarks can be ordered.
In a decision rendered on September 11, 2017, the administrative panel decision of WIPO agreed with the complainant that a unique single complaint can be directed against multiple domain names, even though the registrants had different names and addresses, and ordered the transfer of the domain names to the complainant.
In this case, a complaint had been filed against six domain names containing the French designer Pierre Hardy’s name, including cheappierrehardy.online, pierrehardyoutlet.online, pierre-hardy.store and pierrehardye.store.
The six domain names were resolving to active websites offering for sale counterfeits bearing the trademark ‘Pierre Hardy’. All these domain names were registered by Chinese companies, under different names and different addresses.
Two points to be judged
Two important issues were to be decided: the language of proceedings and the filing of one complaint against multiple domain names. Here, the WIPO administrative panel made a remarkable assessment on these two specific points.
According to paragraph 11(a) of the Uniform Domain-Name Dispute-Resolution Policy (UDRP) rules: “the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
