This is the second of a series of articles on new TLDs as a result of interviews with leading industry players. In this second article we interview David Taylor, a partner in the Intellectual Property, Media and Technology Group at Hogan Lovells‘ Paris office. What do Top Level Domains and the year Christopher Columbus discovered the Americas have in common? According to David Taylor, he predicts the number of applications for TLDs will be 1492, the year Columbus discovered the Americas. Continue reading What do Columbus, the Americas and TLDs Have In Common? David Taylor Talks gTLDs
Hogan Lovells partner and domain name specialist David Taylor explores the likely impact of the introduction of a raft of new high-level internet domain namesThis year will probably be remembered as a landmark one in the history of the internet as the Internet Corporation for Assigned Names and Numbers (ICANN) launched an application window of 90 days from 12 January during which any entity may apply for a top-level domain name. You might not be aware of this, but it’s a significant development for us all. We are looking at an unprecedented shake-up and expansion of the internet’s addressing system. The rationale is that there is a shortage of internet addresses, or domain names, so in a little over a year from now, we will start seeing new versions such as .paris, .london, .berlin, .music, .hotel, .gay and .blog.While the aim is to enhance diversity, choice, competition and innovation, it has important ramifications for law enforcement and consumers as it may well create a multitude of new opportunities for scammers. It will inevitably also cause a considerable burden on business and brand owners across the UK and further afield. As such it will require a significant shift in the strategies of protecting brands on the internet. It will likely mean that any business with a presence on the internet – getting on to be pretty much every brand – will need to increase its budget in order to continue to protect their brand.If a company has only a single brand then the cost may not be significant. However, if there are 1,000 new domain names and a company seeks to defensively register its one brand in half of those, at between £100 and £200 per registration, that is between £50,000 and £100,000. And that would not include potential costs spent in disputes against cybersquatters. Large corporations could find themselves with figures far in excess of that. Fox Entertainment Group estimated additional costs of $12m at a United States Congressional Hearing in May 2010. It is debatable whether this is an excessive estimate or not, but the fact remains that large companies will need to assign significant resources and money to something that arguably has no positive purpose for them. Many have claimed that it is akin to extortion; the concern for others is the fact that such increased costs may ultimately be passed on to consumers.ICANN’s expansion process has involved considerable debate among global stakeholders from the business community, governments, civil society, registrars and registries largely via eight versions of the so-called applicant guidebook, each one subject to comments from anyone as part of a multi-stakeholder process. Over the course of the last three years in particular, brand owners and representative associations have sought substantial rights protection mechanisms to be included commencing with the creation of a special Implementation Recommendation Team (IRT) by ICANN in March 2009 to propose and develop solutions to the issue of trademark protection in the upcoming domain names.Despite the specific rights protection mechanisms put in place, at the end of last year we saw certain parties unhappy with the outcome of this multistakeholder process seeking to bypass ICANN by taking unilateral action via the US Government in an attempt to delay or even derail the process. This has been unsuccessful to date and most brand owners are now seeking to deal with the problem.Having looked at the threats to business and brand owners, one has to acknowledge that the process clearly does provide opportunities for innovation. Potential benefits to the internet include opening the field to users across the globe that hitherto have not been properly served via the ability to create domain names in non-Latin, non-English characters, for instance. Indeed, some brand owners are seizing the opportunity itself and we will be seeing brands applying for new domain names themselves. Many are in the offing, and while most keep such plans highly confidential, some have come out and announced their plans, including Canon, Hitachi and Unicef.So it is not all doom and gloom. But before you think of rushing out to secure one for yourself, do bear in mind that the application fee alone is $185,000.This article was reproduced with permission of the author, David Taylor, Partner at Hogan Lovells International LLP.
Francelot registered the FRANCE LOTS trademark in France in 1989 and registered the domain name ‘francelot.com’ in 1999. However, in January 2007 Francelot discovered that a private individual â whose details were hidden in the publicly available WHOIS, in accordance with French data protection law requirements â had registered the domain name ‘francelot.fr’. The domain name pointed to a parking website which offered links to websites of competitors of Francelot.
In May 2007 Francelot asked AFNIC to disclose the registrant’s details and freeze the domain name in order to prevent any further use and/or transfer, but AFNIC rejected its requests. In June 2007 Francelot obtained a summary judgment against AFNIC in order to force it to disclose this information.(1)
Having obtained the registrant’s details, Francelot decided to bring a court action for trademark infringement and unfair competition not only against the domain name registrant but also against AFNIC. Francelot argued that AFNIC’s failure to freeze the domain name further to its legitimate request had forced it to bring court proceedings. The domain name was subsequently recovered, but only after Francelot had incurred significant legal costs.
In addition, Francelot alleged that AFNIC had acted negligently by allowing the domain name registrant to pursue its illegal actions. Finally, Francelot argued that AFNIC and EuroDNS, which acted respectively as the registry and registrar of the domain name, had the means to freeze the domain name â from both a technical and legal standpoint (ie, the AFNIC charter setting out the registration principles for the registration of ‘.fr’ domain names and the February 2007 government decree on domain names, respectively) â and thus should not be entitled to avoid liability based on their status as technical intermediaries.
After dismissing Francelot’s request against the domain name registrant for procedural reasons, the Versailles Court of First Instance proceeded to analyse AFNIC’s actions to decide whether liability should be found.
First, the court held that AFNIC did not incur liability for failing to disclose the registrant’s details upon request. The then-applicable AFNIC charter â which constituted a contract between AFNIC and its registrars and registrants of domain names under the ccTLDs for which AFNIC is responsible â was clearly in alignment with French data protection legislation and specified the conditions according to which the details of private individuals could be disclosed (ie, either further to a court injunction or after the initiation of dispute resolution proceedings).
Regarding AFNIC’s refusal to freeze the domain name, the court found differently. While the arguments relating to the 2007 decree were dismissed, given that the domain name had been registered prior to the implementation of this decree and thus did not fall under its scope of application, the court decided that AFNIC was indeed liable based on the terms of its charter. The court noted that according to the charter’s provisions, AFNIC was under an obligation to freeze a domain name if its registration constituted a violation of the terms of the charter.
Further, according to the court, the terms of the cease and desist letter sent by Francelot to AFNIC in May 2007 contained sufficient information for AFNIC to freeze the domain name. Thus, by refusing to act upon receipt of the cease and desist letter, in the court’s opinion AFNIC contributed to the unfair competition and loss of goodwill suffered by Francelot.
In May 2011 AFNIC appealed the court’s decision. On September 15 2011 the Court of Appeal of Versailles overruled the court of first instance’s ruling and rejected all of Francelot’s claims against AFNIC.
Like the court of first instance, the appeal court dismissed Francelot’s arguments relating to the 2007 decree. First, as stated by the court of first instance, since the domain name had been registered prior to the decree’s implementation, it did not fall within its scope of application. Under French law, a newly enacted law has immediate effect, but does not apply retroactively. In addition, the appeal court held that the 2007 decree applied only to registries which had been officially designated, which was not the case for AFNIC on February 19 2010.
The appeal court also held that AFNIC had not breached by refusing to freeze the domain name and thus could not be considered as having committed any tort against Francelot. Francelot alleged that, under the charter, AFNIC was obliged to identify potential breaches of a registrant’s contractual obligation when registering a domain name, thereby implying that AFNIC should have prevented the registration since it infringed Francelot’s trademark rights over the term ‘francelot’. AFNIC replied that it had neither the means nor the ability to decide whether a registrant had actually infringed a third party’s rights. Although AFNIC could check whether a registrant had breached its contractual obligations under the charter, the appeal court held that AFNIC was not in fact obliged to do so â this would have been the case only if a court had ordered AFNIC to do so or if an alternative dispute resolution procedure had been initiated. Therefore, AFNIC could not be considered liable for refusing to freeze the ‘francelot.fr’ domain name.
Finally, the appeal court noted that Francelot could have initiated urgent proceedings against the registrant after its details had been disclosed in order to put an end to the alleged infringement.
Although the appeal court did not examine the reasons why AFNIC had not considered itself competent to assess whether the domain name registrant had infringed Francelot’s rights, it seems evident that it should not be within AFNIC’s remit as the ‘.fr’ ccTLD registry to make such an assessment. Indeed, this would imply that under French law AFNIC would have a duty to investigate how a registrant used a specific domain name (eg, whether the term ‘francelot’ was used to designate the products or services covered by the FRANCELOT trademark, and also whether the website at the domain name actually targeted the French public). Given that there are currently over 2 million domain names registered in the ‘.fr’ domain, it would be an almost impossible task for AFNIC to ensure that these are used correctly â even if such an obligation applied only once AFNIC had been notified of any supposed wrongdoing.
With the recent new charter on ‘.fr’ domain names, the new French law and associated decree on domain names, as well as the recently adopted new alternative dispute resolution procedure relating to ‘.fr’ domain names, the issues that this case raised may now be resolved differently in future. In any event, the Versailles Court of Appeal’s decision may help prevent any future rulings finding AFNIC liable in its role as the registry for ‘.fr’ domain names.
This decision(2) is also relevant with regard to the potential liability of domain name registries in general, especially after the new generic top-level domain process begins and many new entities throughout the world (including in France) become responsible for their own generic top-level domains.
For further information on this topic please contact Sarah Taieb, Jane Seager or David Taylor at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (firstname.lastname@example.org, email@example.com or firstname.lastname@example.org).
(2) A copy of the decision (in French) can be found at www.legalis.net/spip.php?page=jurisprudence-decision&id_article=3254.
To register your .FR domain name, check out Europe Registry here.