ok.. did babblefish on the decision...
4. Facts
The Applicant, the Jeuxonline company, has as an activity the provision on Internet of plays on line.
The Applicant for several reasons asserts a former right on the denomination âJeuxonlineâ:
- in July 2001, the domain name <jeuxonline.cc> by Mr Guillaume Martin, current was recorded managing Jeuxonline company;
- in February 2002, was also recorded with its name, the domain name <jeuxonline.info>;
- on June 29,2003, was created the Jeuxonline association whose Mr Guillaume Martin was the President;
- on September 10,2003, Mr Guillaume Martin yielded to Jeuxonline association the domain name <jeuxonline.info>;
- on November 22,2005, Jeuxonline association was transformed into limited liability company Jeuxonline whose Mr Guillaume Martin is the current one managing;
- on December 5,2005, Jeuxonline association yielded to the Jeuxonline company the domain name <jeuxonline.info>.
The Jeuxonline company is also owner of the following domain names: <jeuxonline.org>, <jeuxonline.tv>, <jeuxonline.mobi> and <jeuxonline.eu>.
In addition, on December 30,2005 near the INPI, mark JEUXONLINE indicating was deposited the products and services of classes 25, 35, 38, 41 and 42.
The Defendant, the Kaalys company, is a direct competitor of the Jeuxonline company.
On May 18,2004, the Kaalys company recorded the domain name <jeuxonline.fr>.
This domain name does not carry out, today, towards any active site.
The parts were on several occasions in contact being the transfer of this domain name, without however no agreement being reached.
It is under these conditions that the Center was seized by this litigation.
5. Submission of the parties
A. Applicant
The Applicant makes the point that the Defendant, direct competitor, were informed perfectly of the existence of his former rights and recorded the domain name <jeuxonline.fr> with an only aim of carrying there reached.
In addition, the Applicant submitted to the Expert e-mail of the Defendant in whom this last indicates to have recorded in 2004 the litigious domain name âto make a jokeâ.
Thereafter, in May 2006, the Applicant would have proposed to the Defendant, the sum of 1.500 euros, then of 2.000 euros for the transfer of the domain name <jeuxonline.fr> to his profit.
The Defendant would have refused this proposal by pretexting that the offer was not really in connection with the commercial potential of the name and that it had projects on <jeuxonline.fr>.
The Applicant solicits, consequently, the transfer of the litigious domain name to his profit.
B. Defendant
Defendant, the limited liability company Kaalys, supports that it considered enfreindre forever the law by depositing the domain name <jeuxonline.fr> insofar as this one presents a generic character.
The Defendant recognizes being the principal competitor of the Applicant, this is why it proposed to open a dialogue being a question of the transfer of the litigious domain name.
The Defendant also supports that the representatives of the Applicant having refused any proposal for a meeting and holding up the legal threat continuously, it was put a term at the on June 22,2004 discussions.
In 2006, the Defendant indicated to the Applicant that a site was under development, but which it was obviously free to make of the proposals.
After two financial offers, the Defendant indicated to the Applicant that he was not a salesman taking into account the projects in progress.
A site would currently be under development, this last will not be competitor of <jeuxonline.info> since it will propose anything else.
The Defendant indicates that it does not wish to harm the interests of the site â
www.jeuxonline.infoâ of the Applicant, but contrary, wishes to open at its company a new market.
In addition, the Defendant considers that the Applicant has rights on the domain name <jeuxonline.fr> because the name âJeuxonlineâ revêt no character original within the meaning of the Code of the Intellectual Property.
Thus, the expression âJeuxonlineâ would preexist to the activities of the Applicant.
The expression âJeuxonlineâ would exist independently of the existence of the limited liability company Jeuxonline, its mark or its site.
6. Discussion and conclusions
The Expert notes that the Applicant calls upon a recording and the use of the litigious domain name by the Defendant in violation of his rights and solicits, consequently, the transmission with his profit.
The Expert points out that, in accordance with article 20 (c) of the Payment: âIt makes right to the request when the recording or the use of the domain name by the Defendant constitutes an infringement of the rights of the thirds as defined in article 1 of this Payment and within the Charter and, if the measurement of required repair is the transmission of the domain name, when the Applicant justified his rights on the element, object of the aforesaid the attack and subject to his conformity with the Charterâ.
The Expert also points out that article 1 of the Payment has that one understands by âinfringement of the rights of the thirdsâ, with the title the Charter, âan infringement with the rights of the thirds protected in France and in particular with the intellectual property (author's copyright and artistic and/or patent rights), with the rules of competition and honest behavior in commercial matters and of the rights to the name, the first name or the pseudonym of a personâ.
Consequently, the Expert endeavoured to check, within sight of the arguments and parts subjected by the parts, if the recording and/or the use of the litigious domain name undermined the rights of the Applicant and, the Applicant requesting the transmission of this domain name to his profit, if it justified rights on this domain name.
(I) Recording of the litigious domain name
In the species, the Expert notes that the Applicant justifies to use the domain name <jeuxonline.info>, the denomination âJeuxonlineâ also constituting his company name.
The Defendant does not dispute to know the existence of the Jeuxonline company, which is his principal competitor.
In addition, it arises from the parts poured with the debates that the litigious domain name would have been recorded at the beginning by the Defendant âto make a jokeâ.
Consequently, there is not any doubt that the Defendant, at the time of the recording, was informed of the former rights called upon by the Applicant on the denomination âjeuxonlineâ.
(II) Use of the domain name in violation of the rights of the thirds
To date, the litigious domain name returns towards a white page.
The Defendant indicates, in this respect, to develop a project of site proposing of the plays on line.
To justify of this development which would be made in the absence of any violation of the former rights called upon by the Applicant, the Defendant makes the point that the terms âJeuxonlineâ would be generic and, consequently, with the provision of all.
It would not know disputed being that the terms âJeuxonlineâ adopted as a domain name to promote an Internet site proposing of the plays on line are of a generic nature.
Their protection can thus only be limited.
Indeed, under the terms of the principle of the freedom of the trade and industry, it cannot be reproached a competitor for using as domain name, terms belonging to the current language.
It is besides in the sense that decided the Court of Appeal of Paris on May 25,2005 being the names <servicesfuneraires.fr> field and <services-funeraires.fr>.
However, it is advisable in the species to consider the context in which the recording of the litigious domain name intervened.
This recording was in the beginning a âjokeâ between competitors of the consent of the Defendant.
There is not any doubt that one domain name, even generic, revêt a consequent commercial value, in particular when an activity is already deployed under the same very close domain name, differing only by a gTLD.
However, the fact for the Defendant of recording in all knowledge of cause the denomination adopted by its principal competitor and of refusing to restore to him, and this with an aim, in the long term, of benefitting unspecified from it, constitutes an unfair behavior.
Consequently, the Expert considers that the use of the litigious domain name by the Defendant intervened in violation of the principle of honesty in the trade.
7. Decision
In accordance with articles 20 (b) and (c) of the Payment, the Expert order the transmission with the profit of the Applicant of the domain name <jeuxonline.fr>.
To summarize, there is a company called jeuxonline, the domain in question was registered by a direct competitor who knew of the exsisting company, the registrant did nothing with the domain. They registered the domain "as a joke". The panelist did not say if was generic, but states that a generic name can have "consequent commercial value". The reason the name was transfer was under unfair practice, not under TM law.
