Digital law - Cabinet Bouchara & Avocats

The commercial identifiers of a company distinguish it from its competitors. These intangible assets (trademarks, company names, domain names, etc.) help to build customer loyalty and guarantee a certain quality of the products and/or services marketed by a company.

If the trademark is the most well-known distinctive sign, there are others that are equally important in business life.

Domain names and digital law

When a company intends to offer its products and/or services via the Internet, it is essential to reserve a domain name.

It is recommended to proceed to this step before filing a trademark application, as the domain name is a prior right that can be used against a trademark application or registration.

The domain name is therefore a distinctive sign that will allow the consumer to link the products and/or services marketed by a company on the Internet.

As with trademarks, it is therefore important for companies to take numerous precautions before registering a domain name (verification of prior rights that could constitute an obstacle to reserving the domain name, choice of domain name and its extensions, renewal of the domain name, etc.).

The booker is also likely to face infringements from competitors such as cybersquatting or typosquatting, practices that are becoming more and more widespread.

How to register your domain name?

The choice of a domain name is crucial for the development of a company’s activities on the Internet.

The Bouchara firm is composed of experts specialized in digital law and assists you in the choice of your domain name (checking its availability), the reservation and renewal formalities.

Before registering a domain name …

Check availability

Like a brand, the company must choose the domain name it wishes to reserve and check its availability before beginning any reservation process. Indeed, a domain name is likely to infringe on the prior rights of third parties and in particular on trademarks, company names or trade names used for similar activities.

Knowing the status of prior rights will allow the company to assess the risk of reaction from third parties and to anticipate possible challenges from competitors or other companies.

The rule for reserving a domain name is “first come, first served”. Also, once the availability of the domain name is verified, it is necessary to proceed to its reservation without delay because a domain name is unique in a naming space (like .fr).

The registration of the domain name …

Reserve the domain name

Reserving a domain name requires going through a “Registrar” which is an intermediary with the Registration Offices (notably AFNIC which is in charge of managing domain names under the .fr extension).

Subject to the acceptance of the Office, the domain name will be registered for a limited period of time, which must be renewed in order to maintain its rights.

How to protect your domain name?

Like a trademark, a domain name is a distinctive sign that is protected as soon as it is registered, provided it is used.

In order to protect its domain name against any infringement by third parties, it is necessary for its holder to set up a monthly monitoring in order to identify new domain name registrations, trademarks, company names and other identical or similar subsequent rights registered by third parties.

Bouchara assists you in monitoring your domain names and in particular in analyzing the results of the monitoring in order to adopt the best defense strategy.

Domain name and trademark law

With respect to trademarks, article L.711-3, I, 4° of the Intellectual Property Code provides that a domain name (provided that it is used, according to case law) may constitute prior art that can be used against a subsequent trademark application that is identical or similar.

Subject to demonstrating the existence of a risk of confusion between the prior domain name and the registered trademark, the holder may therefore oppose the registration of a third party’s trademark and request its withdrawal.

Domain name and other distinctive signs

If a trademark can be protected by an infringement action, the domain name can only be defended by the civil liability action provided for in article 1240 of the Civil Code.

Thus, the holder of an exploited domain name may act on this basis to prevent a third party from exploiting an identical or similar domain name for the same activities.

He will also be able to oppose the use of a corporate name, a trade name or any other identical or similar distinctive sign, provided he can demonstrate the existence of a risk of confusion between the signs.

Bouchara’s firm will assist you in detecting the later signs used, in analyzing the risk of confusion and in determining the best defense strategy (letter of formal notice, negotiations to try to reach an amicable solution, filing of a lawsuit, etc.).

When a domain name infringes on a prior trademark, the trademark owner can take action against the disputed domain name via infringement proceedings but also via extrajudicial procedures for the recovery of a domain name (UDRP, SYRELI), which allow the applicant to request the transfer of the domain name that would infringe on his trademark as soon as it is demonstrated that :

The domain name is identical or likely to be confused with the prior mark ;
Respondent has no right or legitimate interest in the registration of this ;
Respondent’s registration and use of the domain name was done in bad faith.

Our services

Assistance and advice

The Bouchara firm will accompany you in particular for :

Your projects of creation of Internet sites and specific application (drafting of the CGV, graphic charter etc…);
The choice of your ;
The implementation of online advertising campaigns;
Compliance with the regulations on the protection and processing of personal data with the CNIL;
The protection of your domain names (reservation formalities, renewal etc…);
The defense of your domain names in UDRP-type proceedings and litigation before the Courts;
Setting up surveillance on your ;
Management of your ;
Detection and processing of complaints related to online content (denigration, etc. …);
The implementation of Internet monitoring to detect violations of your rights.

Negotiation and drafting of contracts

The Bouchara Law Firm assists you in the negotiation and drafting of :

Domain name assignment contracts ;
Contracts for the transfer of rights to the website ;
IT contracts ;
Database contracts ;
General terms and conditions of sale on the Internet ;
Terms and conditions of use of websites, blogs.

Representation

Bouchara Law Firm represents your interests as plaintiff and defendant in litigation relating to domain names, including the following:

Unfair Competition Actions;
UDRP Complaints;
Liability of Internet service providers (content publishers, access providers, hosts, blog publishers, etc.);
Legal proceedings to stop all types of infringements on the Internet (phishing, cybersquatting, typosquatting etc…) and to identify the perpetrators;

Responsibility for internet referencing and automatic suggestions from search engines (cookies).