Cybersquatting refers to the registration as a domain name of a distinctive sign of a personality or an organization, such as a company name or a trademark, by a third party wishing to take material or moral advantage of its present or future notoriety.

The cybersquatter may be pursuing several different goals, including:

• Resell the domain name to the trademark owner at a very high price;
• Prevent the owner of the trademark from reserving it as a domain name and harming the image of the trademark;
• Take advantage of the brand’s notoriety, in particular by redirecting the domain name to its website and thus generate visits.

Even if the objectives can be similar, cybersquatting is different from typosquatting, which consists in registering a domain name that uses a distinctive sign with a voluntary modification.

Depending on how the cybersquatted domain name is used, various legal proceedings may be brought before the courts against its holder.

In any event, the victim of cybersquatting may also, as a matter of principle, initiate extrajudicial proceedings to obtain the deletion or transfer of the domain name. The latter may indeed implement a UDRP procedure or a SYRELI procedure (or others) depending on the domain name extension concerned.

In order to protect oneself against cybersquatting, it is also recommended to quickly establish a relevant strategy for registering domain names that are identical or similar to one’s own distinctive signs, as well as to regularly monitor new registrations of identical or similar domain names and therefore at risk.

Point of legislation

”
In compliance with the principles recalled in Article L. 45-1, the registration or renewal of domain names may be refused or the domain name deleted when the domain name is :

1° Likely to infringe on public order or morality or on rights guaranteed by the Constitution or by law;

2° Likely to infringe intellectual property rights or personality rights, unless the applicant justifies a legitimate interest and acts in good faith;

3° Identical or related to that of the French Republic, a territorial authority or group of territorial authorities or a national or local public institution or service, unless the applicant can prove a legitimate interest and is acting in good faith. […] “

Article L45-2 of the French Post and Electronic Communications Code

Point of jurisprudence

The “Cour de cassation” was able to recall that ” the rules governing the allocation of domain names on the internet, which respect both the principles of freedom of communication and freedom of enterprise and intellectual property rights, have neither the purpose nor the effect of restricting the right of the trademark owner to prohibit the use without his consent, in the course of trade, of a sign identical or similar to the trademark for goods or services identical or similar to those for which it is registered, if such use is detrimental to the essential function of the trademark, which is to guarantee to consumers the origin of the goods or services, because of a likelihood of confusion on the part of the public, except for the effects of legitimate interest and good faith as regards the renewal of the registration of domain names on the Internet “.

Cour de assation, June 5, 2019, No. 17-22.132

The Bouchara Law firm assists you in particular in :

• Judicial and extra-judicial procedures concerning domain names(SYRELI, UDRP, cnDRP, ukDRP…);
• The strategization of ;
• The registration of ;
• Negotiation and redemption of domain names registered in confidence;
• The implementation of backorders.