Nowadays, in France, it is common for holders of intellectual property rights with a distinctive marque to have domain names which infringe their rights transferred to them. However, it is less common for a transfer to be obtained on the grounds of copyright law.
In a decision dated 25 June 2002, the Tribunal de Grande Instance of Bobigny ordered the transfer of a domain name on behalf of a company owning intellectual property rights in a piece of software.
The dispute was as follows:
On 25 May 2000, 3D Soft registered the semi-figurative mark “Car View” at the INPI (French National Institute of Intellectual Property). On 29 September 2000, following a merger with Carpoint.com Llc, Carpoint Inc (which had developed a website for the car industry) acquired the domain name “carview.com”. In June and October 2000, Carpoint Inc and Microsoft registered at the OHIM (Office for Harmonisation in the Internal Market) three European trade marks; "Carview".
On learning of the registration of the trade marks “Car View” by 3D Soft, Carpoint Inc served a writ on 3D Soft before the Tribunal de Grande Instance of Bobigny to obtain cancellation of the French trade mark “Car View” on the grounds of infringement of its domain name.
Not only was Carpoint’s claim for cancellation of the French trade mark dismissed but it was also sentenced under penalty payment to transfer to 3D Soft the domain names "carview.com" and "carview.fr".
1. The dismissal of the claim for cancellation of the French trade mark
Carpoint and Microsoft considered that the trade mark registered by 3D Soft on 25th May 2000 infringed upon the domain name “carview.com” which was acquired by them on 29 September 2000 but had been registered on 28 January 1997.
Such an argument was perfectly admissible. Indeed French courts have admitted that domain names could constitute an earlier distinctive sign that prevents someone else from registering the same sign as a trade mark. For instance, in a decision dated 7 September 2001, the Tribunal de Grande Instance of Paris declared that company F could not hold any right in the name “Adjudic” because of the registration six months earlier of the domain name “adjudic.com”.
Nevertheless, following the argument of 3D Soft, the Court dismissed the claim because the claimants neither provided evidence of the validity of the transfer nor of any exploitation of the website before 2000.
According to the Court, anteriority could have been established through the proof that Carpoint did indeed hold the rights in the domain name after successive transfers. However, the Court did not consider that the documents presented by Carpoint could have asserted the transfer of the domain name on behalf of Carpoint Inc. The Court highlighted the fact that one of the transferors did not have actual authority to act and the lack of precision in one of the transfer documents. The Court reaffirmed that transfers of intellectual property rights require a great deal of precision.
The Court also admitted that anteriority could have been proved through evidence of the exploitation of the domain name before the registration of the trade mark by 3D Soft. The Court stated that there was no documentation to assert that the website “carview.com” was effectively operating prior to 2000, since the only elements that were presented concerned the website “carpoint.com”.
On one hand, this decision is not surprising in respect of the position previously adopted by French Courts. Indeed French judges have already considered on several occasions that the domain name can justify a protection if the claimant proves his/her right in the domain name, the anteriority of its use and the risk of confusion. (Court of Appeal of Paris, 18 October 2000, Virgin Interactive Entertainment Ltd/France Telecom, Tribunal de Grande Instance of Paris 27 July 2000, Market Call/Mille Mercis).
However, the decision of the Court is more surprising concerning the counterclaim of 3D Soft.
2. The counterclaim of 3D Soft
Carpoint counterclaimed for the cancellation of the registration of the Car View European trade marks and the transfer of the domain names “carview.com” and “carview.fr”.
To defend the cancellation and transfer, 3D Soft put forward:
The cancellation claim of the European trade marks was dismissed. However, the Court accepted the claim for cancellation of the French trade mark. To achieve this, the Court could have grounded its decision on the only right of distinctive signs since 3D Soft had properly registered the trade mark “Carview” at the INPI.
Instead, the Court based its decision exclusively on the copyright saying “According to the exhibits presented by 3D Soft, it holds copyrights for both the piece of software and its title “Carview”, formed by the combination of two English words precisely defining the subject of the software, and no anteriority concerning a like product can be cited against 3D Soft by the claimants. In these conditions the use by companies Carpoint Inc., Microsoft Corporation, Microsoft France of the domain names “Carview.com” and “Carview.fr” infringes the copyrights of 3D Soft […].”
Thus, the transfer of the domain name is possible as soon as one owns an intellectual property right in a distinctive sign. This decision is not a landmark decision and is perfectly logical