Vie.com and Pacanet.net : Importance and difficulty about transferring a domain name
26.02.2001
French trademark "PACANET" vs domain name "pacanet.net"
1) Domain name "vie.com" vs French Mark "vie.com"The American Company Virgin Interactive Entertainment is titular of the domain name "vie.com".In order to allow to his affiliate in United-Kingdom to act against the registered trademark "vie.com" and the slogan including the phrase "le bonheur de la vie.com", the American Company has transferred the domain name to him.Having to decide on the admissibility of the British Company, the President of the Court of Appeal of Paris has declared that "if the domain name, particularly taking into account its commercial value for the enterprise who owns it, is in a position to justify a protection against the attacks of which it is the subject, for all that it is necessary that the parties to the case ascertain their rights to the claimed denomination, the anteriority of its use with respect to the sign at issue and the risk of confusion that the diffusion of the same may involve in the mind of the public".It seems therefore that a domain name could be put in the same category as a commercial sign ; however, in the first place it is necessary that the person acting for infringement be the titular. Now, in the cited case, the transfer has not been registered in time and the British Company has been declared to be non-suited ...Court of Appeal of Paris - October 18, 2000French trademark "PACANET" vs domain name "pacanet.net"By an injunction order in chambers to deal with matters of special urgency, passed on April 8, 1998 by the President of the Court of First Instance of Draguignan, the titular of the domain name "paca.net" was condemned "to have the name PACANET withdrawn from the Internet web under a daily fine for delay of 300 FRF by day of delay after a one-month time from the signification of the decision".By a judgment of December 28, 1998, the Court of First Instance has corroborated the injunction order.In May 1999, the titular of the trademark PACANET has referred the matter to the Judge in charge of the Enforcement of the Court of First Instance of Draguignan in order to obtain the settlement of the daily fine for delay which was delivered.The owner of the domain name, even if he tried to demonstrate his diligence with many organisms in order to withdraw the domain name, he is debtor of 150,000 French Francs for liquidation of the fine.When one knows the difficulty for obtaining the registration of the transfer of a domain name and also of the charge of a referencement, one can only ascertain that "for having a denomination withdrawn from the Internet web", a one-month period is really too short and that there is a risk that these settlements under daily fine be used in an excessive manner.Court of Appeal of Aix-en-Provence (15ème Chambre JEX) - November 10, 2000
