Intellectual Property Specialists
Accueil > Practice Areas > Domain Names and IT Law

domain names and IT law

When a company wants to become well known online and promote products or services online, it is imperative that it registers a domain name.

A domain name is therefore one of the company’s distinctive signs which may hold significant economic importance. This is even more so today as the internet is the main means by which consumers become familiar with a company.

In addition, as is the case in trademark law, companies must take a number of precautions when it comes to this new asset by considering the choice of domain name to be used, registering it and protecting it from all forms of attack from competitors in which it may be used in acts of cybersquatting or typosquatting.

How do you register a domain name?

Choosing a domain name

Before registering a domain name, a company must first of all choose the name that it wishes to use. The legal regime concerning domain names is close to that of trademark law insofar as a domain name is another distinctive sign which shows the unique character of services, products or the company itself.

As in trademark law, it is possible for a domain name to infringe on the previously held rights of third parties over a trademark, company name, trading name as well as domain names that third parties might have previously filed or used.

When a domain name infringes on a trademark, the trademark holder may bring a claim against this domain name being used, notably through an infringement action, but also through UDRP legal procedures.

UDRP procedures allow the owner of a previously-registered trademark to have the domain name infringing this trademark transferred, provided that the following conditions are met:

  • The domain name in question is identical or risks being confused with a trademark;
  • The defendant has no legitimate right or interest in registering this domain name;
  • The defendant’s registration and use of the domain name has been done so in bad faith.

It is therefore very important to consider which domain name to choose. Cabinet Bouchara & Avocats is there to assist you in choosing your domain name and helps you to ensure that the name is available through carrying out prior art searches.

It is highly recommended that companies carry out these prior availability searches so that they are able to fully develop their activity under the said sign and so that they are then able to promote it as a domain name.

Filing a domain name

Once a domain name has been chosen and is available, it must be quickly filed because it is unique in a namespace (like the suffix .fr) and is attributed on a first come first serve basis.

In order to reserve a domain name, it needs to be done so at a “register” which will play an intermediary role with the relevant registration authorities, namely the AFNIC (Association Française pour le Nommage Internet en Coopération) which is the designated authority in France for managing domain names using the extension .fr.

Upon being accepted by the relevant registration office, the domain name will then be registered for a limited period which can be renewed before it comes to an end so that any rights over the distinctive sign are not lost.

Cabinet Bouchara & Avocats and its team of lawyers specialized in the field of IT law, accompany you in all filing procedures for your domain name and make you aware of renewal deadlines.

How do you protect a domain name?

A domain name is a distinctive sign for a business which, like a trademark, is protected from the moment it is filed and provided that it is in use.

The owner of a domain name must therefore monitor the domain name and put in place monthly monitoring procedures in order to keep up to date with any other registration applications which may have a bearing on the domain name in question, whether this concerns trademarks, company names, domain names or any other subsequent rights.

Cabinet Bouchara & Avocats is there to assist you in monitoring and protecting your domain names.

Domain names and Trademark law

In the field of trademark law, jurisprudence has made clear that a domain name which is in use may constitute a previously-held right which is protected from subsequently registered trademarks which are identical or similar to the one in question.

If necessary, the owner of a domain name can bring an action against the registration of a third party’s trademark, or even bring an action to ask that the trademark be withdrawn or cancelled.

Domain names and other distinctive signs

Unlike trademark law which is protected through bringing an infringement action, domain names are protected by bringing an action for civil responsibility under Article 1382 of the French Civil Code.

Furthermore, the owner of a domain name in use can prevent third parties from using a subsequently filed domain name which is identical or similar and being used for similar products or services.

A domain name owner can also prevent a third party from using a particular company name, trading name or any other sign which is similar or identical to the domain name being filed and used provided that it is shown that there exists a risk of confusion between both signs.

Cabinet Bouchara & Avocats accompanies and advises you so that you have the best means available to bring an action against third parties attempting to imitate or reproduce your domain name. Our firm also assists you in promoting your domain name.

Advice and assistance in relation to:

  • Legal review of projects, websites and specific applications.
  • Choosing domain names.
  • Implementation of online advertising campaigns.
  • Compliance with regulations concerning the protection and treatment of personal data with the CNIL.
  • Strategies for protecting and reserving domain names.
  • Handling complaints related to domain names.
  • Putting in place monitoring procedures over your domain name
  • Handling of complaints related to online content (such as defamation).
  • Managing your portfolio.
  • Implementation of online violation monitoring systems.

Negotiation and drafting of:

  • Leasing contracts for domain names.
  • Leasing contracts for rights on the internet.
  • IT agreements.
  • Database contracts.
  • General conditions for online selling.
  • Terms of conditions and use for websites and blogs.

Representation in litigation relating to domain names, in particular:

  • Unfair competition matters following the reproduction or imitation of a domain name.
  • UDRP procedures following reservations made in bad faith for similar domain names or your distinctive signs.
  • Liability for Internet Service Providers (digital content editors, access providers, website hosts, blog publishers, etc.).
  • Bringing legal proceedings and injunctions to stop online violations (such as phishing, typosquatting, etc.) and to identify offenders.
  • Liability for web indexing and issues arising from automatic suggestions on search engines.