Olympic Games domain name infringement case – the winner is… Paris

The High Court of First Instance of Paris (‘Tribunal de Grande Instance’) recently ruled against a Parisian who had registered a number of domain names relating to Paris’ failed Olympics 2012 bid. The domain names included “paris2016.com”, “paris2016.fr”, “paris2020.com”, “paris2020.fr”. Also registered were the trade marks the trade marks “Paris 2016”, “Paris 2020”, “Paris 2024” and “Paris 2028”. Action was taken against the registrant in late 2005.In the decision, the court annulled the trademarks with juriscom.net noting the decision being “on the grounds of Article L.712-6 of the French Intellectual Property Code (IPC) which provides that ‘Where registration has been applied for, either fraudulently with respect to the rights of another person or in violation of a statutory or contractual obligation, any person who believes he has a right to the mark may claim ownership by legal proceedings’. The Court took into consideration the fact that the press had published numerous articles over the years on the Olympic Games in Paris, designating the event as “Paris 2012″. The court also highlighted that it is well known that the games are in part financed by the licensing of trade marks to companies exploiting all types of products.” Using the same reasoning, the court ruled the registration of the domain names was fraudulent.Additionally, the action was also based on the infringement of the trademark “Paris 2012”. As this trademark is not the same as the trademarks registered (“Paris 2012”, “Paris 2016”, “Paris 2020”, “Paris 2024”, “Paris 2028”). Juriscom.net notes “the Court examined the infringement in the light of Article L.713-3b IPC, that provides that ‘shall be prohibited, unless authorized by the owner, if there is a likelihood of confusion in the mind of the public, the imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration.’ The provisions of Article L.713-3b IPC are very close to those of Section 10(2)(a) of the UK Trade Marks Act 1994. The Court found that the signs had visual and phonetic similarities, and that they were conceptually close, since all of them evoked the organisation of the summer Olympic Games in Paris, and were based on the use of the year in which these sports events would be organised.”Juriscom.net notes “For the same reasons, the Court ruled that the registration of the litigious domain names also constituted acts of infringement by imitation.””The Court finally held that the registration and use of the term ‘Paris’ undermined the rights of the City of Paris to its name, image and repute. Article L.711-4h IPC indeed provides that “Signs may not be adopted as marks where they infringe earlier rights, particularly […] the name, image or repute of a local authority.””In a ruling dated 27 October 2004, the Court of Appeal of Paris had already rendered a judgement relating to the registration of the trade mark ‘Paris 2000’ and of the domain name ‘paris2000.info’. The Court held that the person who registered and used the domain name ‘paris2000.info’ had committed acts of unfair competition (parasitism) (4), by creating a website with no connection to Paris in general, and to the City of Paris in particular.”The original article is available at http://www.juriscom.net/actu/visu.php?ID=923

Leave a Reply

Your email address will not be published. Required fields are marked *

This site uses Akismet to reduce spam. Learn how your comment data is processed.