Sometimes it is not clearly understood how trademark may or may not help you to get a domain name.  ICANN Uniform Domain Name Dispute Resolution Policy provides one set of rules for this:

  1. Domain name is identical or confusingly similar to a trademark
  2. The one who registered domain name has no rights or legitimate interests in respect of the domain name
  3. Domain name has been registered and is being used in bad faith.

Based on above, trademark is one necessary element to claim rights to domain name registered by another, but not enough.  Now Paris Court of Appeal has given interesting decision under French law, in which claim for trademark infringment was denied, but claim for domain name transfer was granted.

The case related to arcotel.fr domain name, and the court noted that the defendant had established that it had used the term ‘Arcotel’ as part of its company name since 1986.  The court ruled that it could not justify prohibiting use of the term ‘Arcotel’ by the defendant.  However, even if the court considered that while the use of the term ‘Arcotel’ could not be separated from the name of the hotel and its physical premises, the use of this term in a domain name could be separated from the hotel and could thus create a risk of confusion with the claimant’s trademark. On this basis, the court ordered the transfer of the domain name to the claimant.

In other words, the court applied one set of rules to the defendant’s offline use and another to its online use of the domain name. This is also interesting example how both case by case considerations as well as jurisdiction by jurisdiction considerations are important in every case.

For more information  see international law office newsletter (registration may be required).