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.

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Domain names and computer law

When a company wants to be known on the Internet or to 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 an important patrimonial value, especially since the Internet nowadays the most common way for consumers to get information about a company.

Therefore, it is necessary for companies, in the same way as for trademarks, to take numerous precautions with regard to this new asset, both in terms of the choice of the domain name, the registration of the domain name and the life of the domain name by protecting it from all forms of attack by competitors, such as cybersquatting or typosquatting.

Domain names
and the law
to computer science

When a company wants to make itself known on the Internet or to 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 an important patrimonial value, especially since today the Internet is the means most used by consumers to obtain information about a company.

Therefore, it is necessary for companies, in the same way as for trademarks, to take numerous precautions with regard to this new asset, both in terms of the choice of the domain name, the registration of the domain name and the life of the domain name by protecting it from all forms of attack by competitors, such as cybersquatting or typosquatting.

How to register your domain name?

How
register
its name
domain?

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
a domain name …

Choose the name

Before registering a domain name, the company must first choose the domain name it wishes to use. The domain name regime is similar to that of trademarks in that a domain name is a distinctive sign that identifies services, products or a company.

Check availability

As in trademark law, a domain name is therefore likely to infringe on prior rights held by third parties, in particular trademarks, company names and trade names, but also on 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 aforementioned sign and to be able to subsequently enhance the value of this distinctive sign that constitutes the domain name.

Once the domain name has been chosen and is available, it is necessary to quickly register the domain name because a domain name is unique in a naming space (such as .fr) and is attributed to the first person who requests it.

Registering
a domain name …

The registration
of the domain name …

Reserving a domain name

To reserve a domain name, you must use a “registrar” who will play the role as an intermediary with the registration offices and in particular with Afnic, the registration office designated by France for the management of domain names under the .fr extension. The domain name will then be registered for a limited period, subject to the acceptance of the Office, and it will be necessary to renew the domain name before its expiration date in order not to lose its rights on 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

In the field of trademark law, case law considers that a domain name, when used, may constitute prior art and therefore benefit from protection against subsequent trademark registrations that are identical or similar.

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

Unlike trademark rights, which are protected by the infringement action, domain names are protected by the civil liability action under article 1382 of the Civil Code.

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 via infringement proceedings but also via extrajudicial UDRP proceedings. The UDRP procedure allows the holder 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 this domain name;

The registration and use of the domain name by the Respondent was done in bad faith.

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

We advise and assist you in :

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

We negotiate and draft :

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

We represent you in litigation relating to domain names, including :

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.