After 5 years French Court Finds Registrar EuroDNS & Registry AFNIC Not Responsible For TM Infringing Domain Registrations
Back in 2008, 13 French companies filed suit against the registrar EuroDNS and the French Association for Internet Naming in Cooperation (hereinafter: AFNIC), which runs the .Fr ccTLD
The suit alleged that EuroDNS and AFNIC were at fault for allowing third parties to register 129 domain names infringing on their respective Trademarks.
They sued EuroDNS for € 2.9 million and demanded that AFNIC be ordered to freeze or block of the domain names.
The Court of Appeal upheld the ruling of the lower court which held the neither the registrar EuroDNS or the Registry AFNIC had any liability.
“Registrars are neutral in disputes between domain names registrants and third parties claiming a violation of their rights and furthermore held that EuroDNS, as a registrar, shall not be liable for the registrations of its customers.”
The plaintiff were basically asking the Court to impose obligations on registrars that would have required them to act as “gatekeepers” for trademark holders for all the extensions they offer.
The Court of Appeal denied these demands and ruled that registrars have no obligation to control of the domain names their customers register with them, nor are registrars obliged to setup additional filtering measures other than those put in place by the registry.
“Those exact same demands were made against a US registrar in a famous case held before a Texas court … back in 2001.” reminds Luc Seufer, Chief Legal Officer at EuroDNS. “Though our industry is still facing the same issues a decade later, several means to settle them via extra-judiciary routes such as the UDRP or SYRELI for .FR registrations have been successfully setup. As underlined by the Court in its decision, the appellants were misguided when they elected not to recourse to those and decided to act against EuroDNS and the French Registry.”
“According to the Court of Appeal obliging registrars to screen their customer’s registrations would impose disproportionate and very costly efforts on them in regard to the aim of such obligation.”
“Furthermore and on top of the technical burden that would be created, the decision also highlights the fact that just like Trademark registration offices, registrars have no legal means to decide as to the legitimacy of a registration.”
“This decision upholds the position we have always maintained. As a registrar we are bound to remain neutral in any dispute between our customers and a third party.“ said Seufer.
“However neutrality should not be confused with passivity. As the Court acknowledges, although we are in no position to prejudge upon the rights between two parties on a domain name, EuroDNS always act diligently when notified of an issue. Every complaint my department receives is swiftly communicated to the relevant customer along with a very clear reminder of our terms of service regarding third parties’ registered rights.”
By this ruling the Court of Appeal actually confirmed EuroDNS’ advice to its own customers to appeal to the applicable alternative dispute resolution processes when they seek to recover domain names for which they believe to hold exclusive rights on, and where no such process is available, to act against the registrant and not the registrar or registry.
The suit was brought back in December 2008.
Here are a few of the more well know plaintiffs:
Voyageurs du Monde SA
France Télévisions SA (representing the rights of France 2, France 3, France )
Some of the domain names at issue were: