On November 8 2016 the Paris Court of Appeal ruled that a domain name that was transferred under the Uniform Domain Name Dispute Resolution Policy (UDRP) by the World Intellectual Property Organisation (WIPO) had to be transferred back to its initial owner due to the absence of trademark infringement.
The appellant was an individual based in Yemen who offered communication services in North Africa and the Middle East. The respondents were Team Reager AB, a Swedish telecoms service provider established on September 9 2010, and Stone Age Limited, Team Reager AB's trademark assignee.
The respondents owned a number of trademarks, including the EU trademark MOOBITALK, which was registered on February 10 2011.
The appellant registered the domain name 'moobitalk.com' on April 17 2011. The domain name was registered for a website which offered online chat services in Jordan, Kuwait, Iraq, Palestine, the United Arab Emirates, Saudi Arabia, Mauritania and Morocco.
The respondents initially sent a letter to the appellant on February 7 2013, bringing to his attention the existence of the MOOBITALK trademark. The appellant failed to respond to the respondents' letter. Thus, on May 14 2013 the respondents filed a UDRP complaint with the WIPO.
In a July 29 2013 decision, the WIPO panellist ordered the transfer of the domain name.
Tribunal decision The appellant challenged the WIPO order to transfer the domain name by initiating proceedings on August 27 2013 before the Paris First Instance Tribunal. Team Reager AB assigned its MOOBITALK trademark to Stone Age Limited on April 14 2014, after which Stone Age Limited joined the proceedings voluntarily and attended the January 15 2015 hearing.
The tribunal decided in the respondents' favour, holding that by registering the domain name, the appellant had infringed the respondents' trademark.
Court of appeal decision The appellant appealed the tribunal's decision. The Paris Court of Appeal overruled the tribunal's decision, ordering that the domain name be transferred back to the appellant. The court also awarded him costs.
When assessing whether the appellant's registration of the domain name was infringing, the Paris Court of Appeal took the view that the website associated with the domain name did not target the European Union generally and thus did not constitute an infringement, given the territoriality requirement inherent in trademark infringement.
In line with prevailing precedents from the French courts, the Paris Court of Appeal stressed that it was insufficient for the allegedly infringing website merely to be accessible in France or the European Union; rather, it needed to be aimed, at least in part, at all of the European Union or at least one of its member states.
Based on the factual circumstances, the Paris Court of Appeal viewed as particularly relevant the fact that the website associated with the domain name had eight country tabs to choose from, none of which were situated in the European Union. In addition, the Paris Court of Appeal noted that the only available languages were Arabic and English and that, while English is the official language of two EU member states, it had been chosen because the eight countries targeted had numerous expatriates who spoke English rather than Arabic, as supported by a 2006 UN report submitted by the appellant.
The Paris Court of Appeal dismissed the respondents' arguments on territoriality as far-fetched, including the arguments that the domain name had been registered through OVH, a French registrar, and that the top-level domain '.com' targeted all countries, including those within the European Union.
The Paris Court of Appeal decision is sound and consistent with previous precedents on territoriality. Further, the appellant's arguments were carefully constructed. It is thus logical that the Paris Court of Appeal found in his favour.
While some commentators have expressed concerns that this decision may undermine the UDRP, this is unlikely to be the case, as:
- a UDRP decision does not limit court proceedings (this is even specifically provided for under Paragraph 4(k) of the UDRP); and
- the assessment of trademark infringement is intrinsically different from the assessment conducted under the UDRP.
The UDRP includes no requirement of territoriality, while trademark law does. While territoriality can be relevant under the UDRP with regard to the respondent's awareness of a trademark and thus its bad faith, it is not a requirement.
For further information on this topic please contact Vincent Denoyelle or David Taylor at Hogan Lovells by telephone (+33 1 53 67 47 47) or email ([email protected] or david.taylor@hoganlovells.com).The Hogan Lovells International LLP website can be accessed at www.hoganlovells.com.
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