“I’ve lost my domain name!”, “I want to buy a domain name”, “I was the owner of this domain name and I want to get it back” … These are examples of what we often hear, but aren’t they misnomers? Are we really owner of a domain name or isn’t it a metonymy?
Holder of a domain name
Rather than speaking of ownership, it would be better to use the term holder. Ownership has a legal definition of being a right exercised over a physical, or not, property and which opens the right of use, profit and disposition. Therefore, having a domain name seems to match this definition. However, as indicated by the INPI, the domain name differs from the brand as it is not an industrial property and it differs from the company name or trade name because it does not necessarily identify the company or the business assets attached to it.
The Article l.45-1 §3 of the French Electronic Communications and Postal Regulatory Authority, organize the allocation of domain names in chronological order:
Subject to the provisions of Article L.45-2, the domain name is allocated to the eligible applicant who first sent the application. An assigned and valid domain name can not be the subject of a new application for registration.
As such, the successful recipient of the domain name is determined on a first-come, first-served basis, provided that it meets the eligibility requirements: for example, the .FR is open to legal, natural and of age persons residing in the European Economic Area as well as Switzerland.
Domain name and intellectual property
Therefore, arise domain name registration problems when they contain brand signs, and thus conflict with the operating monopoly related to the trademark rights. Indeed, if a third party uses a domain name containing all or part of a brand name, the assignee of that brand may apply for legal proceedings to seek sanction for counterfeiting (Article L335-2 of the Intellectual Property Code) or for parasitic acts (Articles 1382 and following of the Civil Code relating to civil liability).
And where it gets complicated is when the brand name uses words or phrases that are not sufficiently distinctive from services and/or products it offers:
For example, in March 2013, the Court of Appeals of Bastia found that the domain name “mariageencorse” could not be protected. In this case, there was a dispute between the holders of the .fr extension on the one hand and .com on the other. According to the court, a generic domain name can not be protected under the unfair competition. In this case, the term “mariageencorse” is considered to be too generic for protection.
Moreover, generic domain names can not be considered to be the exclusive property of a company or a brand. In 2005, the companies “A toute Vitesse” and “A vive Allure” were in dispute over the use of the name “coursier”, the first having initially registered the name in .com and in .biz, the second having registered the .FR (and change its company name for the same name as the .FR TLD). The Court of Appeal of Paris then considered that the domain names merely descriptive or generic could not be the object of a particular protection. The judges considered that it was not possible for the holder to oppose any anteriority in the same way as the distinctive signs.
If I buy a domain name, am I it’s owner for life?
As a reminder, we do not buy a domain name, we rent a domain name. Also, speaking of holder of a domain name, rather than owner allows you to:
- Remember that you do not own a domain name for life. A domain name must be renewed every year, and in case of forgetfulness, after a period of redemption (30 days for the .fr) it falls into the public domain.
- Monitor the domain name expiration date.
- You can thus “lose” the hold of the domain name. If you were, for example, the holder of a generic domain name such as casquette.fr and had not proceeded – voluntarily or not – to renew it, you will have no appeal to recover it (except asking the new holder to transfer it to you).
- The loss of a domain name can not be considered theft: if you have not monitored the expiration date, check the access to the email account associated with the registration and its security, you risk to kick yourself.