France: Domain-Name Registrars Exempt From Trademark Liability

A French court recently decided to exclude domain name registrars from liability for trademark infringing domain names registered by their customers in a case involving 13 large French companies against Luxembourg domain name registrar EuroDNS. The Third Chamber of the “Tribunal de Grande Instance de Paris” by the judgment on 26 August (in French) confirmed that domain name registrars could claim exemption from liability in the same way as internet service providers under the European Union E-Commerce Directive (EC Directive 2000/31/EC). EuroDNS in a press release quoted the decision which explained that a registrar’s business was of “strict technical nature [and performed] following specific requests from customers who bear the sole responsibility of choosing and using the domain name.” As a result, the registrar could not be expected to verify nor uphold IP rights on its own, EuroDNS said. The complainants, including Air France, Michelin, Gervais Danone, French Public Broadcasters (France 2, France 3 and France 4) Auchan, Lancôme, L’Oréal, Renault and others, were granted the transfer of a long list of names they declared to be identical or similar to their trademarks.

While EuroDNS applauded the decision, some observers warned against arbitrary decisions of what names were said to look similar to the trademarks in question. For instance, aucun.fr was put on the transfer list by the judges (as similar to Auchan), while aucnan was not. For the domain name elin.fr, the court in its considerations favoured rejecting a transfer, but in the final judgment ordered EuroDNS to transfer it. The rule that registrars had to transfer names on notification from the trademark owners might open a huge door to future litigation, one expert warned.