Although it has been in operation for nearly six years, the Afnic SYRELI College has just been confronted with a new legal problem in the muscadet.fr file.
On 23 June 2017, the Nantes Wine Federation filed a request for the transfer of the domain name muscadet.fr to its portfolio.
On the basis of strongly supported arguments, the College asked whether, in accordance with Articles L.45-2 and L.45-6 of the French Electronic Communications and Telecommunications Act (CPCE), the rights of a controlled designation of origin (AOC) could be invoked.
First of all, it should be recalled that any person demonstrating an interest in bringing proceedings can ask Afnic to remove or transfer a domain name (L.45-6 of the CPCE) for their benefit.
In the present case, the Applicant is none other than the Nantes Wine Federation, which has been mandated by the Muscadet AOC legal defence association to defend and manage various AOCs, including the “Muscadet” AOC; and as such, its interest in bringing proceedings is perfectly obvious.
However, despite having an interest in bringing proceedings, the Nantes Wine Federation must then, in accordance with Article L.45-6 of the CPCE, prove that the domain name muscadet.fr, which is identical to that of the “Muscadet” AOC, falls within the case law provided for in Article L.45-2 of the CPCE. In the present case, the Applicant pursued its arguments concerning the infringement by the domain name muscadet.fr of the rights of the “Muscadet” AOC, a distinguishing feature as defined in Article 721-1 of the French Intellectual Property Code.
The defence of distinguishing features before the SYRELI alternative dispute resolution procedure, is nothing new. The College has already had occasion to consider that the defence of distinguishing features fell within the case law provided for in Article L.45-2 of the CPCE, and was therefore a legitimate basis for the SYRELI procedure. That is also why, in its decision, the College considered that “the “Muscadet” AOC as a distinguishing feature may benefit from protection against infringements of its rights…“; the SYRELI College added the following conditions to the coverage of judicial case law:
“…provided that the Applicant justifies:
- its rights to defend and manage the AOC;
- the similarity between [the AOC and the disputed domain name] and
- proprietary use by the Holder thus depriving the beneficiaries of the AOC of any legitimate use and/or use liable to detract from the reputation of the AOC.
In the present case, SYRELI considered that the three conditions were met, finding in particular that:
- “Nothing in the information sheet of the Holder’s company enables the identification of any link between the Holder’s activity and the vine-growing and wine-making environment to which the Muscadet AOC refers;
- There is no evidence that the Holder has operated a website dedicated to the marketing of wines bearing the Muscadet AOC label;”
- In its dealings with the Applicant, the Holder acknowledged the renown and value of the distinguishing feature of the Muscadet AOC.
As a result, the Nantes Wine Federation was able to win its case and, through its action, ensure the recognition of the rights of an AOC before such an out-of-court procedure!