Two decisions concerning Domain Names
17.06.1999
The idea of the internet being a land-without-no-law is more and more inconsistent. Two recent decisions from the First Instance Court of Paris show that rules, such as speciality of goods and/or services, are applied to judge the infringement of a trademark by a domain name.
Grosfillex v. Plastiken (08/01/99)In this case, Grosfillex and Plastiken are competitive societies. Plastiken filed the domain name Grosfillex.com and this address was linked to Plastiken home page, presenting the society and its products.The mark Grosfillex was not recognized as being infringed, because the web page did not present any products using Grosfillex as a trademark. But, unfair competition was retained against Plastiken for using the social name Grosfillex in order to misappropriate its goodwill.It has to be noticed here, that a trademark designating class 38 (communication) would probably not permit to the owner to protect its mark against a use on the internet, because the mark has to design the product and/or service. Therefore a real use in class 38 should be to commercialize a service such as web hosting or access providing. This is what the US Patent and Trademark Office seems to apply.Alice v. Alice (23/03/99)Alice and Alice are two societies working in different activity domains. The oldest one is titular of a trademark Alice. The second one filed a domain name Alice.fr and is issued for infringement by the first one, after that an agreement could not be entered.It has been judged that :- the trademark was not infringed : because of the speciality of the different services, there was no risk of confusion possibility.- there was no civil liability for using the social name of the oldest society neither, because Alice is a common name for societies and because of the different activities.It has to be noticed here, that the first society is titular of a trademark and therfore could file Alice.tm.fr as a domain name.Another solution is to file a .com international domain name. If Alice.com is already taken, it is possible to specify for example, the activity, given a domain name such as activity_alice.com. This solution has also the advantage that this address will be given by a search engine to someone entering the activity as key_word...
