Law No. 2011-302 of 22 March 2011 provides in Article 19 that any person demonstrating a right to bring action may request the deletion or transfer of a domain name under the circumstances provided for in Article L.45-2 of the French Electronic Communications and Telecommunications Act (CPCE).
Among the cases in which a SYRELI complaint may be lodged, article L.45-2 2° of the French Electronic Communications and Telecommunications Act (CPCE) is the article which is most often used; it provides for the case of a “domain name … which may infringe intellectual property or personality rights, unless the applicant can substantiate a legally protected interest and is acting in good faith“.
As a result, since 2011, while 74% of the decisions have been handed down on that basis, only 3% concern the infringement of personality rights.
When analyzing the decisions handed down by the College, it can be seen that the Claimants argue very little about the infringement of a domain name using their patronymic in the belief that the mere fact they have an identical or similar surname is sufficient in itself to obtain satisfaction.
Let us see how the SYRELI College decides the infringement of personality rights within the framework of article L.45-2 2° of the CPCE.
In the first place, the College does not limit a Claimant’s right to bring action merely because they have a patronymic strictly identical to the domain name in dispute; indeed, the concept of the right to bring action was also recognized in the case of involving a Claimant with an almost identical surname or in the cases of and in which the Claimants had similar surnames to that of the domain name in dispute. The College considered that the Claimant had a right to bring action in so far as the domain name consisted of all or part of the Claimant’s surname associated with a term identifying said Claimant (occupation, date, event, geographical location, etc.).
Furthermore, it should be stressed that the Claimants must prove their personality rights by providing identity documents (e.g. a copy of the national identity card); attention should be paid, however, to providing a power of representation when the Claimant is represented by a third party.
As evidence, in its decision FR-2015-01042, the SYRELI College dismissed the Claimant’s request, filed by a third party, after finding that it had no power of representation.
The same was true in decision FR-2013-00465, in which the Claimant did not provide any power of representation to the publisher who was acting on her behalf in the proceedings.
Having an identical, almost identical or similar patronymic and demonstrating same does not, however, guarantee that the Claimant obtains the deletion or transfer of the domain name.
In order to obtain the transfer or deletion of the domain name in dispute, the Claimant must prove that the holder of the disputed domain name is “likely to infringe on [his/her] personality rights” and that the Holder “has no legally protected interest or is acting in bad faith by registering or renewing the domain name”.
Thus, the College considered, in decision FR-2015-01037, that “the registration of the domain name which associates the name of a public figure, without the latter’s authorization, with the marketing of products of a brand competing with that which sponsors the Claimant, could be regarded as an act of bad faith on the part of the Holder.“.
The College also found, in light of the documents filed by the Claimant, in decision FR-2014-00815, that the Claimant had introduced evidence of the Holder’s bad faith considering that “the domain name had been registered in order to harm the Claimant’s reputation and function“; by way of example, the Claimant communicated supporting documents substantiating his profession and a record of the judicial officer stating that the website to which the domain name linked included his identity, proposed content with insinuations about his private life and contained hypertext links associated with implications that had the effect of undermining his honor and function.
If there are cases in which it is easy to see the lack of legally protected interest and the Holder’s bad faith, for some, on the other hand, SYRELI had to resort to the body of evidence method.
Thus, in thecase, the College accepted the Claimant’s request on the basis that he had been a Member of Parliament since 2002, that the website to which the domain name linked had the same activities as the Claimant, and that on it the Claimant was presented as the publisher and editor of the publication. It also found that the Holder, who was unknown at the postal address indicated in the Whois database, had entered an email address belonging to a third party, which prevented him from being contacted. Considered in their entirety, these indications could only lead to confusion in the average citizen.
The same approach was used in the casein which the Claimant practicing as a lawyer since 2008 had been the holder of the domain name from December 2011 to December 2015. The Holder, who had a different patronymic, used the domain name to sell clothes online, a service that had no direct or indirect link with the legal profession, although that quality was indicated in the domain name. Moreover, the address he had indicated in the Whois database was not sufficient to contact him. Again, the SYRELI College concluded that the domain name was liable to cause confusion in the mind of consumers in the light of all these documents and arguments.
These decisions were recently supported by judicial case law and, in particular, by the decision of the Paris Regional Court (TGI), 3rd Chamber, 1st section, of 2 March 2017 in which the court found that “the association in this domain name of the plaintiff’s first name and family name, due to the inclusion verbatim of these two items and the unusual character of the name in question, incurs a risk that Ms. X may be considered by Internet users as being responsible for, or at least associated with the commercial activities carried out from that address, all the more so in that a search carried out on search engines using her surname and first name results in the display of links to this site alongside links concerning her personally.”
Proving the lack of legally protected interest or the Holder’s bad faith is therefore indispensable, the onus for which is on the Claimant; to return to the case , the Claimant had to lodge a complaint twice in order to obtain the transfer of the domain name. In the first case, the Claimant indicated “that the letter addressed to the Holder was returned with the mention “Unknown, insufficient address” and that the domain name is used to sell clothes online“, but none of these assertions having been substantiated, the SYRELI College handed down a decision rejecting the claim on the basis it had insufficient evidence with which to prove the lack of legally protected interest and the Holder’s bad faith as defined in Article R. 20-44-46 of the French Electronic Communications and Telecommunications Act (CPCE).
This shortcoming has been regularly found, since the SYRELI College has only ruled in favor of the lack of legally protected interest or the Holder’s bad faith in 27% of the cases.
There are many examples of incomplete case files: in its decision FR-2015-00875, the SYRELI College rejected the request for the transfer of the domain name, considering that proof of the lack of legally protected interest and the Holder’s bad faith had not been provided, despite the fact that “the Claimant carries on an activity under his patronymic name, he had not furnished any evidence of confusion which he had an interest in terminating”.
The same applies to the decisions FR-2015-00930 and FR-2016-01167, in which the SYRELI College considered that “the documents provided by the Claimant were insufficient to prove the lack of legally protected interest and the Holder’s bad faith” recalling that “The College rules on the statement of claim based solely on the deeds and documents filed by the two parties without carrying out further research”.
It is clear that the obligation to prove the lack of legally protected interest or the Holder’s bad faith is in many cases omitted by the Claimant; the latter considers too often that the sole ownership of a patronymic or the simple account of the facts alleged against the Holder without supporting documents is sufficient to obtain satisfaction. While, for many Claimants, “the registration of the domain name is evidently unlawful”, the College must hand down a reasoned decision based on written evidence, without it being able either to complete the file by itself or to carry out research in order to substantiate its decision.