Digital law
Areas of expertise > Digital Law
Trademarks and other distinctive signs have a role of identification of a company in relation to another. The distinctive sign is therefore a rallying sign for customers. The trademark is the most well-known distinctive sign, but there are others such as the company name or the domain name.
Domain names and the right to computerization
When a company wants to make itself known on the internet or offer its services and products online, it must register a domain name.
The domain name is therefore a distinctive sign for the company, which has significant asset value, especially since the internet is now the means most used by consumers to find out about a company.
Therefore, it is necessary for companies, in the same way as for trademark law, to take numerous precautions with regard to this new asset, both in terms of the choice of domain name, the registration of the domain name and the life of the domain name, protecting it from all forms of attack from competitors, such as cybersquatting or typosquatting.
How to register your domain name?
The choice of a domain name is therefore very important and must be carefully considered. Our firm, composed of lawyers specialized in digital law, assists you in the choice of your domain name and helps you to ensure the availability of the chosen name by conducting prior art searches on the name. The firm also assists you in all the procedures for registering your domain name and informs you of the renewal deadlines for your domain name.
Before registering the domain name…
Ask yourself the question of trademark registration
Our lawyers carry out prior art searches for you in France, but also abroad if necessary, and analyze them to enable you to file a sign that does not infringe the prior rights of third parties.
The second reflex to have is to register a valid trademark, i.e. a sign that is distinctive and lawful. Our firm will advise you on the choice of your sign to avoid a trademark cancellation action being brought against your trademark.
Check availability
As in trademark law, a domain name is therefore likely to infringe prior rights held by third parties, in particular trademarks, company names, trade names, but also domain names that third parties may have registered or used previously.
It is strongly recommended that companies carry out such availability searches in order to be able to develop an activity under the said sign and subsequently be able to promote this distinctive sign that is the domain name.
Register the domain name
Once the domain name has been chosen and is available, it is necessary to register the domain name quickly because a domain name is unique in a naming space (such as .fr) and is allocated to the first person who requests it.
Registration of the domain name …
Reserve the domain name
To reserve a domain name, it is therefore necessary to call on a “registry” which will act as an intermediary with the registration offices and in particular Afnic, the registration office designated by France for the management of domain names under the .fr extension. The domain name will then be registered, subject to acceptance by the Office, for a limited period of time, which will need to be renewed before the scheduled term in order to retain the rights to this distinctive sign.
How to protect your domain name?
A domain name is a distinctive sign for a company, which is protected like a trademark as soon as it is registered, but only if it is used. It is therefore necessary for the owner of a domain name to monitor his domain name and to set up monthly monitoring to be informed of the registration of similar domain names, trademarks, company names or other subsequent rights. Bouchara & Avocats will help you monitor your domain names and assist you in protecting your domain names.
Domain name and trademark law
The holder of a domain name may therefore, if necessary, oppose the registration of a third party’s trademark, or even act to request the withdrawal of the trademark.
Domain name and other distinctive signs
In addition, the holder of an exploited domain name may prevent a third party from exploiting a subsequent identical or similar domain name for similar goods and services.
The domain name holder may also prevent a third party from using a company name, a trade name or other distinctive sign that is identical to the domain name registered and used, if there is a likelihood of confusion between the signs.
Bouchara & Avocats will assist you and advise you in order to give you the means to act against third parties who would attempt to imitate or reproduce your domain name and will also assist you in the evaluation of your domain name.
When a domain name infringes a trademark, the trademark owner can take action against this domain name, in particular through an infringement procedure but also through an extrajudicial UDRP procedure. The UDRP procedure allows the owner of the prior trademark to obtain the transfer of a domain name that would infringe a trademark provided that:
The domain name is identical or likely to be confused with a trademark;
Respondent has no right or legitimate interest in the registration of the domain name;
Respondent’s registration and use of the domain name was done in bad faith.
Our services
Assistance and advice
- validation of projects, websites and specific applications,
- choosing domain names,
- setting up online advertising campaigns,
- the implementation of the regulations relating to the protection and processing of personal data with the CNIL,
- domain name protection strategies and domain name reservation procedures,
- handling of domain name complaints,
- setting up a monitoring on your domain name,
- management of your domain name portfolio,
- handling complaints related to online content (disparagement, etc.),
- setting up of an Internet infringements monitoring.
Negotiating and drafting of contracts
- domain name assignment contracts,
- contracts for the transfer of website rights,
- IT contracts,
- contracts relating to databases,
- general terms and conditions of sale on the Internet,
- general terms of use of websites, blogs.
Representation
- unfair competition following the reproduction or imitation of a domain name,
- UDRP procedure following the reservation in bad faith of a domain name similar to your distinctive signs,
- liability of internet service providers (content publishers, access providers, hosts, blog publishers, etc.),
- setting up legal proceedings to stop all types of infringements on the Internet (e.g. phishing, typosquatting, etc.) and to identify the perpetrators,
- liability related to internet referencing and automatic suggestions from search engines.
