Cybersquatting

Cybersquatting is the abusive registration or use of a domain name that reproduces or imitates a trade mark, a company name, a surname or another sign in which a third party holds rights, in order to profit from it, sell it back to the right holder or divert traffic. French law does not define the practice under that name, but addresses it through trade mark law, under Articles L. 713-2 and L. 713-3 of the French Intellectual Property Code, through civil liability under Article 1240 of the Civil Code and, for French domains, through Articles L. 45-2 and L. 45-6 of the French Post and Electronic Communications Code.

Forms of cybersquatting

The classic form is the registration of a domain name identical to a trade mark, for resale or advertising parking. Typosquatting registers close spelling variants to capture typing errors. Dotsquatting targets the same trade mark under other extensions. The registration of a name combining the trade mark with a descriptive term, and the reactivation of a name abandoned by its holder, belong to the same family.

Legal bases

The mere registration of a domain name is not use in the course of trade in relation to goods or services. Trade mark infringement requires the domain name to be used to offer identical or similar goods or services, or to harm a trade mark with a reputation. Where the site is inactive or parked, the action rests on civil liability, unfair competition or free riding, diversion of traffic and harm to the company name or trade name constituting faults. For .fr domains and the other extensions managed by AFNIC, Article L. 45-2 of the Post and Electronic Communications Code allows the refusal, deletion or transfer of a domain name liable to infringe intellectual property rights or personality rights, unless the registrant shows a legitimate interest and acts in good faith.

Remedies

Three routes coexist. Court proceedings make it possible to obtain the transfer or cancellation of the name, damages and injunctions, if need be in summary proceedings. Out of court procedures offer a quick and less costly solution, without compensation: the UDRP procedure for generic extensions, and AFNIC’s SYRELI procedure for French extensions. In every case, the file rests on proof of the earlier right, of the domain name holder’s lack of legitimate interest and of its bad faith, the most common indicator of which is a refusal to transfer except against a high price.

Key points

Cybersquatting is tackled through infringement where the domain exploits the trade mark for goods or services, through civil liability in other cases, and through the UDRP or SYRELI out of court procedures where only recovery of the name matters. Proof of bad faith and of the lack of legitimate interest is decisive. The content of the site should be recorded before any formal notice, and the most exposed variants and extensions of one’s trade mark should be registered as a precaution.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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