Conflicts between trade marks and domain names

A conflict between a trade mark and a domain name arises when a third party’s internet address reproduces a protected sign, or conversely when a later trade mark reproduces a domain name in use. A domain name is not an intellectual property right, but it may infringe a trade mark and, under certain conditions, constitute an earlier right enforceable against one. Disputes are resolved before the courts or through out-of-court procedures specific to each extension.

Infringing domain names

Registering a domain name identical or similar to a trade mark does not, in itself, constitute infringement. The Court of Cassation holds that a domain name infringes only if the goods or services offered on the website are identical or similar to those designated by the trade mark, in accordance with the principle of speciality. The court therefore examines the content of the site. An inactive domain name, or one used for an activity unrelated to that of the trade mark, falls rather within civil liability, free riding (parasitisme) or out-of-court procedures, except where the trade mark has a reputation.

Domain names as earlier rights

The French Intellectual Property Code accepts that a domain name of more than merely local significance may bar the registration of a later trade mark where there is a likelihood of confusion on the part of the public. Case law takes account of actual use of the website rather than mere registration, and the holder must show use of the name for a specific activity. This right may found an opposition before INPI or an invalidity action.

Out-of-court procedures

For generic extensions, the UDRP procedure, administered in particular by the WIPO Arbitration and Mediation Center, allows the transfer or cancellation of a name that is identical or confusingly similar to the trade mark, where its holder has no rights or legitimate interests and the name has been registered and used in bad faith. For the .fr extension, Afnic’s Syreli procedure leads to comparable measures, on the basis of the French Post and Electronic Communications Code. These procedures are fast and inexpensive, but give no entitlement to damages.

Key points

A domain name infringes a trade mark when it is used to offer identical or similar goods or services, mere registration being insufficient. Once used, it may also constitute an earlier right enforceable against a trade mark. Faced with an opportunistic registration amounting to cybersquatting, the UDRP or Syreli procedures, which are faster than court action, should be preferred. Where damages are sought, an infringement or unfair competition action remains necessary.

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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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