What means of action for a Right-holder ineligible under the Naming Policy?

17 November 2017 - By Floriane Duel

 

First of all, it should be recalled that the registration or renewal of a domain name under the .fr is not open to everyone; both acts are governed by Article L45-3 of the French Electronic Communications and Telecommunications Act (CPCE), which states that "Application to register a domain name, in each of the top-level domains is possible for:

  • Individuals resident in the territory of the European Union;
  • Corporate entities having their registered or main office located in the territory of a Member of the European Union."

In addition, when a domain name under the .fr has been registered by a third party which infringes your rights, apart from an amicable settlement[1], only judicial or extrajudicial means can be used to bring the infringement to an end.

Various means can be used to bring the infringement to an end. In such a case, depending on the damage suffered, the claimant will opt for one solution rather than another.

What are the possible solutions to bring the infringement to an end?

First of all, there is the technical operation referred to as a"suspension" of the domain name, which consists in precluding any request for a future operation on the domain name (change of registrar, transfer of the domain name, etc.). This does not affect the operation of the domain name, however. In other words, the website to which the domain name refers will always be visible to the general public.

There also exists the "blocking" of a domain name, which consists in rendering the domain name inoperative (the website and related e-mail addresses no longer work).

The deletion of the domain name is also a technical solution to bring the infringement to an end since this causes the domain name to fall back into the public domain (the web site and related e-mail addresses no longer work). It is important to note that deletion results in the immediate withdrawal of the domain name from the Whois database, making it registrable on a first-come, first-served basis, although sometimes the first-comer is not the claimant who obtained the deletion of the domain name.

Finally, there is the compulsory transfer of the domain name, in other words the recovery of the domain name without obtaining the consent of its holder, which is only possible when a judicial or extrajudicial decision (SYRELI or Expert ADR) has ordered it.

Care should be taken though: these solutions are not opened by simple request to Afnic. The latter does not suspend, block, delete or transfer a domain name on its own initiative. It may carry out such operations only in the context of procedures strictly defined in the Naming Policy or pursuant to a court decision.

This raises the question of how rights-holders who are not eligible under the Naming Policy can defend their rights against a domain name under the .fr that is detrimental to them.

Afnic's Alternative Dispute Resolution procedures (ADR)

Article L45-6 of the French Electronic Communications and Telecommunications Act (CPCE) states that "Any individual that has a valid reason for doing so may petition the Registry [of the .fr] to delete or transfer a domain name for the individual's benefit when the domain name in question falls within the scope provided for in Article L. 45-2. The Registry shall give its decision within two months of its receipt, in accordance with an adversarial procedure ...".

The article refers here to the two Afnic ADRs, namely, SYRELI and Expert ADR, which are also the only two possible out-of-court procedures for dealing with disputes relating to domain names under the .fr [2]

A cursory review of articles L45-3 and L.45-6 of the CPCE suggests that only the deletion of a domain name, when it falls within the scope provided for in Article L45-2 of the CPCE, can be requested by a Claimant not eligible under the Naming Policy. Since the Claimant is not eligible, they cannot register a domain name under the .fr and consequently cannot request the transfer of the domain name for their benefit in an ADR procedure.

In its thirteenth decision, the SYRELI College was able to act on this principle. In decision ref. FR-2011-00013 sonos.fr the College noted that "Despite the fact that SONOS Inc. has an interest in bringing proceedings, the company cannot benefit from the transfer operation requested since it is not eligible under Article L. 45-3 of the CPCE.".

The SYRELI College also noted in its decision ref. FR-2012-00252 than "as long as the Claimant requests the deletion and not the transfer of the domain name concerned by their request, Article L.45-3 is respected; on the basis of their interest in bringing proceedings, the Claimant may request the deletion of the domain name".

However, in the course of the decisions, the SYRELI College has given a broader interpretation to these two articles, since 17% of the requests for transfers filed by Claimants not eligible under the Naming Policy were granted by the College.

How can an ineligible Claimant obtain the transfer of a domain name under the .fr?

In decision ref. FR-2012-00119 , the SYRELI College, after recalling that "the Claimant is a company located within the territory of the United States and as such is not eligible for the .fr Naming Policy and is therefore not entitled to request the transfer of the domain name , found that "the request for transfer is for the benefit of the French company YAHOO! France SAS" and that "the legal relationship between the Claimant and YAHOO! France SAS has been proven" and considered that "the request for transfer is admissible."

Conversely, in decision ref. FR-2013-00358 , the SYRELI College noted that "although referring to a French subsidiary, the Claimant has not requested the transfer of the domain name for the latter's benefit; nor has any evidence been provided to establish the legal relationship between the subsidiary in question and the Claimant".

On reading these two decisions, it appears that the College accepts requests to transfer disputed domain names for the benefit, not of a Claimant that is ineligible under the Naming Policy, but for one of its French subsidiaries with which the legal relationship has been proven.

This principle was confirmed in particular in decision refs. FR-2012-00278 and FR-2013-00405 concerning the domain name ; in the first decision the College indicated that "although the Claimant seeks the transfer of the domain name on behalf of its French subsidiary, BROADSOFT SAS, the College finds that the information provided by the Claimant does not establish the legal relationship between BROADSOFT Inc., and the BROADSOFT SAS company".In the second decision the College found that "the Claimant requests the transfer of the domain name on behalf of its French subsidiary, BROADSOFT SAS; [and that] the information provided by the Claimant is sufficient to establish the legal relationship between BROADSOFT Inc. and the French company BROADSOFT SAS. Accordingly, the College considered that the request for transfer was admissible."

In 2014, in decision ref. FR-2014-00557 the College extended the admissibility of a request for transfer to a subsidiary located in the territory of one of the Member States of the European Union after having obviously found that "the legal relationship between the Claimant and ADROLL ADVERTISING LIMITED has been proven". The decision is coherent within the meaning of Article L.45-3 of the CPCE which authorizes the registration of a domain name by individuals residing within the territory of the European Union and by corporate entities having their registered office or place of business within the territory of one of the Member States of the European Union, and has been repeatedly confirmed in several decisions, in particular FR-2014-00581 , FR-2014-00773 and FR-2016-01287 .

In decision ref. FR-2016-01163 , the College provides further clarification in noting that "the Claimant requests the transfer of the domain name for the benefit of its indirect French subsidiary with which the legal relationship has been proven [...] wholly owned by PROCTER & GAMBLE HOLDING France, which is itself 15.95% owned by the Claimant and 84.05% by the GILLETTE LATIN AMERICA HOLDING BV, which is 100% owned by the Claimant.". From this observation, the College considered that "the request for the transfer of the domain name for the benefit of an indirect subsidiary wholly owned by the Claimant was not admissible under Article I.iii of the SYRELI Regulations which provides that: "the measures that may be applied for and obtained by the Claimant in connection with the proceedings are limited exclusively to the transfer of the domain name to the Claimant [...]".

This decision therefore clarifies the framework within which an ineligible Claimant may request the transfer of a .fr domain name to one of its subsidiaries.

Since the Claimant cannot benefit from the domain name themselves, nor can they transfer it to one of their subsidiaries located within the territory of one of the Member States of the European Union, unless they own 100% of the subsidiary in question.

As will be appreciated, a Claimant that is not eligible under the Naming Policy may therefore request either the deletion or the transfer of the domain name to a 100%-owned subsidiary located within the territory of one of the Member States of the European Union.

However, the deletion of the domain name or its transfer to one of the Claimant's eligible subsidiaries will only be possible if and only if the Claimant first of all substantiates their interest in bringing proceedings, secondly substantiates their legal relationship with the subsidiary for which they have requested the transfer, and thirdly if they subsequently substantiate that the domain name falls within the scope of one of the cases listed in article L.45-2 of the French Electronic Communications and Telecommunications Act (CPCE).

In decision ref. FR-2016-01105 the College rejected the request for transfer of the domain name after considering that "the Claimant had not demonstrated their interest in bringing proceedings ... ".

In decision ref. FR-2013-00529 the College dismissed the Claimant's request for transfer for lack of "useable documents in the case file".

In decision ref. EN-2013-00539 , the College found that "in spite of the fact that Debbie Morgan Macao Commercial Offshore Ltd and MISSGUIDED LIMITED had an interest in bringing proceedings, they could not benefit from the transfer operation requested since no evidence had been brought forward to support their eligibility with regard to Article L.45-3 of the CPCE".

Finally, in decision ref. FR-2014-00663 the College considered that "by requesting the deletion and not the transfer of the domain name , the Claimant complies with Article L.45-3 of the CPCE [... and] can therefore request the deletion of the domain name.". At the end of its analysis of the case file, however, the College considered that "the documents provided by the Claimant are insufficient to provide proof of the lack of legitimate interest and of good faith on the holder's behalf [...] and decided to refuse the transfer of the domain name".

Other procedures and services offered by Afnic

In addition to the alternative dispute resolution procedures (SYRELI and ADR EXPERT), it is possible for anyone, including persons not eligible under the .fr Naming Policy, to apply to Afnic for the opening of a eligibility verification procedure against a holder that is not eligible under the .fr Naming Policy. There is only one condition: proof must be provided, by any means, of the Holder's ineligibility.

As part of this eligibility verification procedure, the holder must provide evidence of their eligibility within a maximum period of two months, or risk having their entire domain name portfolio deleted.

This eligibility verification procedure therefore constitutes an alternative to the ADR procedures since any applicant for such a procedure has no need to have an interest in bringing proceedings or even to have rights protected in French territory.

Please also note that Afnic provides rights-holders with a set of tools that can be used to reach an amicable solution with holders. To find out more, we invite you to read our Practical Guide which is also available on our website.

Lastly, Afnic recently set up a new service called "Fr Watch", enabling anyone (regardless of their geographical location) to check whether a .fr domain name infringes their rights or not (trademarks, company names, domain names, etc.). The service allows you to identify domain names that include your brand, domain name or company name in their terminology, and also to evaluate the share of traffic being lost as a result.

To set up this service, please contact your registrar. Please note that all .fr-accredited registrars can provide the service. For further information, please visit our website section entitled "Products and services".

 


[1] For further information, please see our Practical Guide for rights-holders.

[2] as well as those under the other TLD suffixes which Afnic manages, i.e.: .pm, .re, .tf, .wf and .yt.

 

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