French domain name registrar transfers rights to domain name based on posterior GI registration

In a recent decision, AFNIC, the French country-code top-level domain name registrar, transferred the rights to the domain name ‘porcelainefrancaisedelimoges.fr’ to the owners of the French geographical indication (GI) ‘Porcelaine de Limoges’ (decision FR-2023-03612).

Background

In 2014, France introduced a national system of GI protection for craft and industrial products (Law No. 2014-344 of March 17, 2014 – the 2014 Law) [IPKat here]. This prompted a surge of registrations for well-known French crafts, such as Laguiole knife [IPKat here] or Basque linen. Immediately after the adoption of the 2014 Law, producers of Limoges porcelain started preparing the registration file. They applied for registration of ‘Porcelaine de Limoges’ on 8th of June 2017.

According to the registration file, porcelain has been produced in the Limoges region since the late 18th century. By 1910, the product was so reputed that a court from the neighbouring region of Centre-Val de Loire prohibited to use the inscription ‘Limoges’ on non-Limoges porcelain. GI registration was granted by the French IP Office (INPI) on 1st of December 2017.

In parallel, an unnamed person (‘defendant’) registered the domain name ‘porcelainefrancaisedelimoges.fr’ (‘French porcelain from Limoges.fr’). This was done on 24th of February 2017, that is, before the application for GI registration was filed. The web-site includes announcements of casinos, smoking devices, romantic encounters.

Convinced this domain name infringed their rights, producers of Limoges porcelain (‘claimant’) turned to SYRELI, an alternative dispute resolution (ADR) procedure operated by AFNIC. The claimant asked that the domain name be transferred to them or, in the alternative, revoked altogether.

Under Art. L45-2 of the French Postal and Electronic Communications Code, the registration or renewal of domain names may be refused or the domain name revoked when such domain name is likely to infringe intellectual property or personality rights, unless the applicant demonstrates a legitimate interest and acts in good faith.

In its allegations to AFNIC, the plaintiff invoked two rights. First, to object to both registration and renewal of the domain name, they relied on their earlier right to corporate name “Association for Geographical Indication ‘Porcelain from Limoges’”, registered since 2014. Second, for the renewal of the domain name in 2021, they relied on their GI rights to ‘Porcelaine de Limoges’, registered since 2017.

According to the plaintiff, the domain name registration was made in bad faith. Although the domain name registration was done before the GI application was filed, French media were already covering the plaintiff’s preparations: the respondent surely knew about the reputation of Limoges porcelain and its forthcoming GI registration.

Decision

AFNIC sided with the claimant. According to AFNIC, the domain name in question is similar to the registered GI, the only addition being ‘French’.

The claimant successfully proved that the GI’s reputation pre-dated the registration of the domain name. This is namely visible in the drafts that led to the adoption of the 2014 Law: ‘Porcelaine de Limoges’ was mentioned as one of the potential GIs as early as 2011. The upcoming registration was also extensively covered by French media in 2011-2017, as proved by the claimant.

As a result, the domain name constituted a misappropriation and a reputation weakening of the GI ‘Porcelaine de Limoges’. AFNIC thus agreed to transfer the domain name to the claimant.

Comment

This domain name dispute stands out for two reasons: the fact that it is based on a GI right and the fact that the GI is posterior to the registration of the domain name.

Until recently, the European Union’s (EU) Member States were not required to introduce a domain name ADR system that would accommodate GIs. Similarly, the Uniform Domain Name Dispute Resolution (UDPR) system only allows its applicants to invoke trade mark rights.

In this sense, France has been a forerunner of the recent legislative changes. With the adoption of the EU-wide GI system for crafts and industrial products (Regulation (EU) 2023/2411), country-code top-level domain name registries (such as AFNIC) shall ensure that their ADR procedures for domain names recognise registered GIs as a right that can be invoked in those procedures (art. 46). Moreover, the scope of GI protection now explicitly includes GI use in domain names (art. 40(3)). Similar clauses will be included in the upcoming GI reform for agricultural products, wines and spirits. This will effectively protect EU GIs from cybersquatting.

At the same time, Regulation (EU) 2023/2411 is silent as to whether such ADR procedures shall be applicable, when a GI is registered after the contested domain name. Akin to what has occurred in France during the 2014 reform, several hundreds of potential EU GIs for crafts and industrial products have been already identified, many with years, if not centuries of traditions. While their producers are preparing the application files, cybersquatters might seize the opportunity to capitalise on their efforts, similarly to the ‘porcelainefrancaisedelimoges.fr’ case.