In a ruling of May 28 2014 the Lyons Court of Appeal confirmed a first-instance decision which found that the registration and use of a domain name constituted not only trademark infringement, but also infringement of French copyright law, known as 'droit d'auteur'. Droit d'auteur is approximately equivalent to copyright law in other countries, although there are some important differences.
The claimant was the Tourist Office of Val Thorens, a well-known French ski resort. The defendant was a French individual who specialised in the provision of IT services such as web hosting and advertising.
The individual registered the domain names 'val-thorens.net' and 'val-thorens.org' t in 1998 and 2000, respectively. The two domain names directed to real estate websites for properties in the vicinity of the Val Thorens ski resort.
On April 1 2004 the claimant filed a French trademark application for the term 'Val Thorens' for goods and services in Classes 1 to 45 of the Nice Classification, including temporary housing services (ie, holiday rentals). In addition, the claimant apparently produced evidence that it had registered the 'val-thorens.com' domain name and started using it as early as April 1997.
The claimant filed court proceedings in Lyons against the defendant, claiming that the domain names owned by the defendant had been registered in violation of the VAL THORENS French trademark and the droit d'auteur in the term 'Val Thorens', and that the unauthorised use of the term 'Val Thorens' on the defendant's websites was in itself unfair competition.
The Lyons First-Instance Tribunal did not find unfair competition, but granted the claimant's other requests and ordered the cessation of all uses of the term 'Val Thorens' – both in itself and as a domain name – on the grounds of both trademark and droit d'auteur infringement.
The defendant appealed and claimed that:
- no droit d'auteur could be held in the term 'Val Thorens'; and
- the trademark of the same name was null and void, due to registration of the two domain names nearly six and four years before the trademark registration.
The defendant based its claim on Articles L711-4 and L714-3 of the French IP Code, which provide that:
"It is not possible to register as a trade mark a sign which infringes a prior right, including, inter alia : a) A registered trade mark...; b) A company name if there is a likelihood of confusion in the mind of the public; c) A trade name that is known nationwide and if there is a likelihood of confusion in the mind of the public...
a trade mark registered in violation of articles L.711-1 to L.711-4 will be declared null and void by courts."
The appeal court considered that while the domain names were indeed registered before the VAL THORENS trademark, such registration was obtained in violation of the existing droit d'auteur held by the claimant in the term 'Val Thorens'. In this regard, the court found that in addition to its use as the name of a ski resort, the term 'Val Thorens' was used as a title in several leaflets, websites and other original works and was therefore protected as such under droit d'auteur.
Since the defendant could provide no evidence of use of the two domain names pre-dating the claimant's website, the court found that he was not in a position to rely on the domain name registrations as prior rights to request cancellation of the VAL THORENS trademark.
Further, and despite the defendant's claim that the two activities should be distinguished, the sale of real estate displayed on the defendant's websites was deemed likely to cause confusion among the public with the holiday rentals covered by the VAL THORENS trademark and showcased on the claimant's website.
While there is no doubt that the decision conforms with French law, it may seem strange to those familiar with the notion of copyright law in common law jurisdictions. Titles are not usually protected under copyright because they are not considered to be unique enough and are too short to contain the necessary degree of creative authorship. Thus, it seems unlikely that a US or UK court would have made a similar finding, particularly in respect of what could be argued to be a geographical location. In this regard, the French court seemed to avoid this issue by finding that 'Val Thorens' was a new expression which had been specially created to describe a particular skiing area and was used as a title on brochures and other works in a new and original way.
In addition, it is not certain that a panel under the Uniform Domain Name Dispute Resolution Policy (UDRP) would have found for the claimant under similar circumstances, which may have been the reason why the claimant decided to address the issue of the defendant's domain names before the French courts instead. The UDRP is an alternative dispute resolution procedure designed primarily for obvious cases of cybersquatting, in which complainants must prove all of the following three circumstances:
- The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
- The respondent has no rights or legitimate interests in respect of the domain name.
- The domain name was registered and is being used in bad faith.
While the claimant would have succeeded on the first ground, having a registered trademark for numerous services (simply asserting a geographical name would not be enough), it may have had trouble with the second and third grounds, given the length of time for which the defendant had been using the domain names for a seemingly legitimate business selling real estate in Val Thorens and the fact that he had been doing so a number of years before the claimant registered its own word (non-figurative) trademark covering such services – although in itself, this also seems rather strange as it may prevent anyone else from using the term 'Val Thorens' in relation to the sale or rental of real estate property inVal Thorens. For example, in Kur- und Verkehrsverein St. Moritz v StMoritz.com (WIPO Case D2000-0617) the panel denied the transfer of 'stmoritz.com', and in Commune of Zermatt and Zermatt Tourismus v Activelifestyle Travel Network (WIPO Case No. D2007-1318), the panel denied the transfer of 'zermatt.com'. In both cases the complainants could assert trademark rights for goods or services other than those described by or related to the geographical meaning of the term in question, but the panel found that the registrants nevertheless had a legitimate interest in respect of the domain names as they were using them to provide informational websites about the resorts in question.
For further information on this topic please contact David Taylor or Jane Seager at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email ([email protected] or [email protected]).The Hogan Lovells International LLP can be accessed atwww.hoganlovells.com.
