another misguided WIPO decision

[typist]

jeuxonline.fr - meaning "online games" in french - was transferred, even though the (single) panelist conceded the domain is generic, and the domain had never been used for any www purposes.

Some guy had previously registered jeuxonline.cc and later named his company "jeuxonline"...

It's a pity that regular courts are expensive.

http://www.wipo.int/amc/en/domains/d...2006-0010.html

[Pim(P)]

that's ****ed up

[DNQuest.com]

Is there an English version of this befroe anyone jumps to conclusions?

[Steen]

I didn't know WIPO was used for .FR - interesting.

[maroulis]

Originally Posted by Steen

I didn't know WIPO was used for .FR - interesting.

free.fr was lost just like this i think

[Kevin]

Originally Posted by typist

jeuxonline.fr - meaning "online games" in french - was transferred, even though the (single) panelist conceded the domain is generic, and the domain had never been used for any www purposes.

Absurd.

It's generic, but...what? Not generic enough???

[Ian]

Originally Posted by maroulis

free.fr was lost just like this i think

I think the word Free is a TM in France

[Rockefeller]

wiposuck,net is open...anybody feel like developing a site?

[DNQuest.com]

Like I said.. let's get and English version before we jump to conclusions unless the posters are able to read french, we don't know the proceedings... Remember, windows is genereic, apple, cheer, champion.. all genereic words.. big deal, in TM law they are not. Besides, you do not need a TM to have rights (or greater rights) to a domain.

[Steen]

Originally Posted by Ian

I think the word Free is a TM in France

Which seems personally reasonable to me. Why would they honor English dictionary words when the case is .FR(ench?)

[typist]

Originally Posted by DNQuest.com

Like I said.. let's get and English version before we jump to conclusions unless the posters are able to read french, we don't know the proceedings...

I am not sure what has lead you to believe I posted without being able to read french. It seems as if you are the one who is jumping to conclusions here.

Remember, windows is genereic, apple, cheer, champion.. all genereic words.. big deal, in TM law they are not.

This is terribly misleading. "online games" will never be anything but descriptive when used in the context of online games.

Besides, you do not need a TM to have rights (or greater rights) to a domain.

I think you missed my point.

[Creature]

Originally Posted by DNQuest.com

Remember, windows is genereic, apple, cheer, champion.. all genereic words.. big deal, in TM law they are not. Besides, you do not need a TM to have rights (or greater rights) to a domain.

Correct me if I am wrong; It's only generic if you apply the original dictionary meaning to the word. ie If you own apple .com and your site content is about an apple that you eat, then it's a generic domain because it's not possible to get a trade mark on the word apple for an apple that you eat. Therefore if you register a dictionary word and you apply the dictionary meaning as the content, then you are on very safe ground imo.

If you register any generic word and do nothing with it, then right or wrong, you are potentially preventing a TM holder from using the domain and without reading any rules, that blocking of access seems unfair to me. You need to make good use of the name. A dead site will only annoy a TM holder as they could be doing something with the site. That reminds me of a few sites I need to get started!!

[NostraDomainus]

Originally Posted by Steen

Which seems personally reasonable to me. Why would they honor English dictionary words when the case is .FR(ench?)

.FRance, not .FRench

[touchring]

So, can we'll all need to setup LLC using the names of our generic names to increase our rights?

[DNQuest.com]

typist - the reality is domainers are very short sided and will argue a point without knowing all the facts. You may be able to read French, but I bet only a small handfull are able to. If you follow these boards for any length of time, you know people just pull info that supports their position and don't present the fully story, then others jump on the bandwagon without fully knowing all the facts. That's all I am trying to point out. Is their and English version of it or is someone able to translate the full decision. I know I am interested.

[typist]

Originally Posted by DNQuest.com

domainers are very short sided and will argue a point without knowing all the facts.

that looks like a description of myself!

[DNQuest.com]

ok.. did babblefish on the decision...

4. Facts

The Applicant, the Jeuxonline company, has as an activity the provision on Internet of plays on line.

The Applicant for several reasons asserts a former right on the denomination “Jeuxonline”:

- in July 2001, the domain name <jeuxonline.cc> by Mr Guillaume Martin, current was recorded managing Jeuxonline company;

- in February 2002, was also recorded with its name, the domain name <jeuxonline.info>;

- on June 29,2003, was created the Jeuxonline association whose Mr Guillaume Martin was the President;

- on September 10,2003, Mr Guillaume Martin yielded to Jeuxonline association the domain name <jeuxonline.info>;

- on November 22,2005, Jeuxonline association was transformed into limited liability company Jeuxonline whose Mr Guillaume Martin is the current one managing;

- on December 5,2005, Jeuxonline association yielded to the Jeuxonline company the domain name <jeuxonline.info>.

The Jeuxonline company is also owner of the following domain names: <jeuxonline.org>, <jeuxonline.tv>, <jeuxonline.mobi> and <jeuxonline.eu>.

In addition, on December 30,2005 near the INPI, mark JEUXONLINE indicating was deposited the products and services of classes 25, 35, 38, 41 and 42.

The Defendant, the Kaalys company, is a direct competitor of the Jeuxonline company.

On May 18,2004, the Kaalys company recorded the domain name <jeuxonline.fr>.

This domain name does not carry out, today, towards any active site.

The parts were on several occasions in contact being the transfer of this domain name, without however no agreement being reached.

It is under these conditions that the Center was seized by this litigation.

5. Submission of the parties

A. Applicant

The Applicant makes the point that the Defendant, direct competitor, were informed perfectly of the existence of his former rights and recorded the domain name <jeuxonline.fr> with an only aim of carrying there reached.

In addition, the Applicant submitted to the Expert e-mail of the Defendant in whom this last indicates to have recorded in 2004 the litigious domain name “to make a joke”.

Thereafter, in May 2006, the Applicant would have proposed to the Defendant, the sum of 1.500 euros, then of 2.000 euros for the transfer of the domain name <jeuxonline.fr> to his profit.

The Defendant would have refused this proposal by pretexting that the offer was not really in connection with the commercial potential of the name and that it had projects on <jeuxonline.fr>.

The Applicant solicits, consequently, the transfer of the litigious domain name to his profit.

B. Defendant

Defendant, the limited liability company Kaalys, supports that it considered enfreindre forever the law by depositing the domain name <jeuxonline.fr> insofar as this one presents a generic character.

The Defendant recognizes being the principal competitor of the Applicant, this is why it proposed to open a dialogue being a question of the transfer of the litigious domain name.

The Defendant also supports that the representatives of the Applicant having refused any proposal for a meeting and holding up the legal threat continuously, it was put a term at the on June 22,2004 discussions.

In 2006, the Defendant indicated to the Applicant that a site was under development, but which it was obviously free to make of the proposals.

After two financial offers, the Defendant indicated to the Applicant that he was not a salesman taking into account the projects in progress.

A site would currently be under development, this last will not be competitor of <jeuxonline.info> since it will propose anything else.

The Defendant indicates that it does not wish to harm the interests of the site “www.jeuxonline.info” of the Applicant, but contrary, wishes to open at its company a new market.

In addition, the Defendant considers that the Applicant has rights on the domain name <jeuxonline.fr> because the name “Jeuxonline” revêt no character original within the meaning of the Code of the Intellectual Property.

Thus, the expression “Jeuxonline” would preexist to the activities of the Applicant.

The expression “Jeuxonline” would exist independently of the existence of the limited liability company Jeuxonline, its mark or its site.

6. Discussion and conclusions

The Expert notes that the Applicant calls upon a recording and the use of the litigious domain name by the Defendant in violation of his rights and solicits, consequently, the transmission with his profit.

The Expert points out that, in accordance with article 20 (c) of the Payment: “It makes right to the request when the recording or the use of the domain name by the Defendant constitutes an infringement of the rights of the thirds as defined in article 1 of this Payment and within the Charter and, if the measurement of required repair is the transmission of the domain name, when the Applicant justified his rights on the element, object of the aforesaid the attack and subject to his conformity with the Charter”.

The Expert also points out that article 1 of the Payment has that one understands by “infringement of the rights of the thirds”, with the title the Charter, “an infringement with the rights of the thirds protected in France and in particular with the intellectual property (author's copyright and artistic and/or patent rights), with the rules of competition and honest behavior in commercial matters and of the rights to the name, the first name or the pseudonym of a person”.

Consequently, the Expert endeavoured to check, within sight of the arguments and parts subjected by the parts, if the recording and/or the use of the litigious domain name undermined the rights of the Applicant and, the Applicant requesting the transmission of this domain name to his profit, if it justified rights on this domain name.

(I) Recording of the litigious domain name

In the species, the Expert notes that the Applicant justifies to use the domain name <jeuxonline.info>, the denomination “Jeuxonline” also constituting his company name.

The Defendant does not dispute to know the existence of the Jeuxonline company, which is his principal competitor.

In addition, it arises from the parts poured with the debates that the litigious domain name would have been recorded at the beginning by the Defendant “to make a joke”.

Consequently, there is not any doubt that the Defendant, at the time of the recording, was informed of the former rights called upon by the Applicant on the denomination “jeuxonline”.

(II) Use of the domain name in violation of the rights of the thirds

To date, the litigious domain name returns towards a white page.

The Defendant indicates, in this respect, to develop a project of site proposing of the plays on line.

To justify of this development which would be made in the absence of any violation of the former rights called upon by the Applicant, the Defendant makes the point that the terms “Jeuxonline” would be generic and, consequently, with the provision of all.

It would not know disputed being that the terms “Jeuxonline” adopted as a domain name to promote an Internet site proposing of the plays on line are of a generic nature.

Their protection can thus only be limited.

Indeed, under the terms of the principle of the freedom of the trade and industry, it cannot be reproached a competitor for using as domain name, terms belonging to the current language.

It is besides in the sense that decided the Court of Appeal of Paris on May 25,2005 being the names <servicesfuneraires.fr> field and <services-funeraires.fr>.

However, it is advisable in the species to consider the context in which the recording of the litigious domain name intervened.

This recording was in the beginning a “joke” between competitors of the consent of the Defendant.

There is not any doubt that one domain name, even generic, revêt a consequent commercial value, in particular when an activity is already deployed under the same very close domain name, differing only by a gTLD.

However, the fact for the Defendant of recording in all knowledge of cause the denomination adopted by its principal competitor and of refusing to restore to him, and this with an aim, in the long term, of benefitting unspecified from it, constitutes an unfair behavior.

Consequently, the Expert considers that the use of the litigious domain name by the Defendant intervened in violation of the principle of honesty in the trade.

7. Decision

In accordance with articles 20 (b) and (c) of the Payment, the Expert order the transmission with the profit of the Applicant of the domain name <jeuxonline.fr>.

To summarize, there is a company called jeuxonline, the domain in question was registered by a direct competitor who knew of the exsisting company, the registrant did nothing with the domain. They registered the domain "as a joke". The panelist did not say if was generic, but states that a generic name can have "consequent commercial value". The reason the name was transfer was under unfair practice, not under TM law.

[typist]

Originally Posted by DNQuest.com

To summarize, there is a company called jeuxonline

this guy (complainant) registered jeuxonline.cc first, later named a company jeuxonline. only much much later did he actually transfer the domain to the company named jeuxonline.

the domain in question was registered by a direct competitor

I find this dubious. In this sense, anyone who registers a somehow related domain will be a "direct competitor". The nature of the internet is that there will always be a lot of competition for something like "online games".

who knew of the existing company

So what. Obviously trying to construct a bad faith trail here...

the registrant did nothing with the domain. They registered the domain "as a joke".

A cunning plot of evil and unfair competition: Doing nothing. And since when did jokes become unfair competition?

The panelist did not say if was generic,

No. On the contrary, the panelist stated it can not be contested that "online games" as a domain name to promote online games is generic.

(and remember, since the panelist believes the respondent is the "principal" competitor, the panelist must also know that the respondents business is "online games")

The panelist continues, stating there can only be very limited protection for such a domain, and that principles of freedom of commerce would suggest that a competitor can not be disallowed to register a domain consisting of (descriptive) words commonly used in everyday language, and cited a court decision which would support that.

The reason the name was transfer was under unfair practice, not under TM law.

No, the domain was transferred not under unfair competition law, but under the Unfair Dispute Resolution Procesdure (lame, I know...forgive me...). Seriously, I am not sure whether a regular court would have reached the same conclusion.

UDRP rules are coarse, and many single panelists seem to be slightly interventionist and slighly biased towards complainants.

[Dave Zan]

One could argue life's unfair. But will you gain anything beneficial if you don't
play by the "rules"?

[typist]

My point is that the UDRP seems to overstretch the rules in some cases. Existing trademark and competition law is just fine (almost...).