Oh Non, Mon Nom!

Posted March 9th, 2009

Sylvain Hirsch is an expert on many things French, but particularly Internet issues and of course, .fr. Here’s his inside take on AFNIC, restrictions on registration, options for dispute resolution and other tasty tidbits.

In Cyberspace, the French  (AFNIC’s ) touch is about the specific regulations for acquiring a (domain) name, searching, protecting your personal data and defending your brand on the Internet under .fr.

Acquiring a .fr domain is a pretty straightforward process, provided you either:

• are a corporate entity located in France  and can evidence it with your SIRET Number (Registration number at the Trade’s Registry) and/or be identified in an online dartabase;

• are the (happy individual or corporate) owner of a registered trademark valid in France (i.e. a national French registration,  a registered CTM or an International Registration designating France). In that case, it is very interesting to note that the requirement is of any such registered trademark. The domain which registration under .fr is requested does not need to have any link to the trademark. A US company which would own say a registered CTM for “NameSmash” would be eligible on that basis to apply for any number of any available .fr domains

• are an individual resident in France, i.e. with an address in France (this liberalization dates from June 20, 2006);

Whatever your situation with respect to the above eligibility criteria, the administrative contact MUST be based in France and have an effective address in France to which legal and extrajudicial documents can be sent.


Searching the .fr zone

The rules regarding access to zone files (the list of the domains registered under a given Top Level Domain) are of the “patchwork type”, meaning completely heterogeneous. While gTLD registries offer to interested parties the possibility to sign a Zone File Access Agreement allowing the download of the zone file on a free basis, not so with the majority of ccTLDs. The ccTLD landscape varies indeed from liberal access policy similar to the gTLDs in for instance Austria to completely restricted access (the large majority of ccTLDs).

AFNIC, the French registry has adopted its own solution, under the name SQAW, which they translated as “Whois Data Access Qualified  Service” (which –despite its name- does give access to the list of domains under .fr, but not to the Whois). Use of SQAW is subject to the signature of a license agreement providing for use of the list for internal purposes in return for an annual fee of 10 000 Euros. Seven companies have so far subscribed to this service, among which, the signatory of this post.

The famous Mr Ano Nymous
Individuals applying for the registration of a denomination under .fr can opt for a restricted publication of their private personal data. Such registrant’s details will appear in the Whois under the name Ano Nymous.

In the (un)likely event you ever find that a domain identical or confusingly similar to one of your trademarks has been registered to dear Mr Ano Nymous, what would your options be?  There are actually five possibilities, which we present hereunder from the easiest to the more complex, corresponding to different escalations and expenses levels.

The first tool historically proposed by AFNIC to cope with this situation (which remains operational) is an interface enabling you to communicate with the Administrative contact of a domain that chooses the restricted publication. This tool allows third parties (at no cost) to communicate with the administrative contact without revealing the identity of the domain name holder or its administrative contact, preserving their total anonymity. The role of AFNIC is strictly limited to transferring the message, without any verification of its content. See more HERE.

AFNIC has recently implemented a new procedure which somewhat outdates the first tool, (whereby you can, at no cost but under specific conditions) request from the Registry to remove the anonymity status of such a registrant. All you have to do is download a personal data disclosure request form HERE.  This will work pretty fast and well, provided you can evidence prior rights in France on an identical or (confusingly) similar registered trademark, or on a company name or trade name in France, or on a title protected by copyrights in France, or rights on a surname/ pseudonym;

Should your request for removal of anonymity not be accepted by AFNIC, you can also (and that’s the latest implemented procedure) file with AFNIC (i.e. not with WIPO or any other Out of Court DRP provider), a DRP for obvious breaches of the provisions of the decree dated February 06, 2007 HERE.

The (sweet) name of this new procedure is PREDEC (for your collection of acronyms). Such a case would be  (for instance) when the contested domain name  “identically or almost identically reproduces a trademark, whether or not it is associated with a misappropriation of a prefix such as “www” without the owner having any legitimate right or interest and without he/she/it having acted in good faith (typosquatting, dotsquatting )”. See more HERE.  The AFNIC site mentions also that “This procedure would make it possible to achieve a decision for the transmission, blocking or deletion of the domain name within a minimum of 45 days; throughout the term of the procedure, the domain name would be frozen”.

Should your request for removal of anonymity not be accepted by AFNIC, you have other “classical” out of Court alternatives, such as filing (in French, s’il vous plait) the local equivalent of the UDRP, named PARL, in French, managed by WIPO, with a scope of application much broader than the traditional UDRP (your complaint can be based on a company name or trade name or copyright or other IP right).

Last, but not least there remains the classical good old judicial way, by way of obtaining a summary injunction.

[Sylvain Hirsch is a former French and EU Trademark Attorney, and is the founder of IP Twins. He has been involved in the intersecting fields of law, the Internet, trademarks and domain names for over ten years.]

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Posted in .fr, CCTLD's, ICANN, Know Your Domains, UDRP, Whois, WIPO by Sylvain Hirsch