UDRP/Legal help, please

[dnreg]

Hi,

First, the facts: I own www.francaisedesjeu.com currently, and have it just hanging around on sedo. There is a company in France that does lotteries, and its name is Francaise Des Jeux, and they own www.francaisedesjeux.com.

Now, they sent me a registered mail today that says they believe I'm infringing on their trademark, and that they will go forward with "udrp proceedings" if I don't agree to disband the domain upkeep/parking.

My questions are these: 1) Since I spell it differently, it's not a trademark violation, is it? and 2) They're in France, and I'm in the US, and I did a search for US registered trademarks and Francaise Des Jeux is not one of them, so can they really do anything about it anyway, legally?

They say they believe there is a "fair chance" at a successful UDRP claim, and they cite their reasonings for believing so because the company has a monopoly in France, and that the French government owns the majority of the company in investments, neither of which strike me as particularly important in this instance.

So, can anyone help me, or give advice?

Thanks for any help you all give me.

 

[A D]

A letter is hardly a UDRP case.

It's just a bullying tactic to get you to turn over the domain.

-=DCG=-

 

[blindchild]

Will give you some advice:
If they do not have an trademark in the US they cant do anything and you wont get sued or either get in a problem so dont worry at all.

Because if they are doing an case, they have to prove their trademarkship for US too which they do not have as you stated.

So just dont worry.

 

[dnreg]

Thank you all very much for your advice, that's what I thought.

 

[blindchild]

no problem, if any more questions feel free to ask.

 

[namedropper]

Dear lord, what's wrong with the people giving advice here... ?

Someone in the US most certainly can infringe on a trademark in France.

Having a domain that's spelled slightly different is not a defense to trademark infringement, all it has to be is "consusingly similar" which in this case it definitely is.

Depending upon why you registered the name it's conceivable you have a legitimate non-infringing use, but so far I wouold have to say that your domain looks extremely suspicious and, barring evidence that you haven't given, that you are in fact violating their trademark.

If you want real legal advice, contact a lawyer who understands the laws as well as contracts that cover domain names.

 

[keyser]

Francaisedesjeu.com is a case of typosquatting IMO.
I am not sure it is a "bullying tactic to get you to turn over the domain" but only a source of many legal problems.

Good luck, you will need some.

 

[Dave Zan]

My questions are these: 1) Since I spell it differently, it's not a trademark violation, is it?

Oh, it very well can be, dnreg. It very well can be.

There are lots of UDRPs to prove that.

(thanks for the link btw, jberryhill...)

and 2) They're in France, and I'm in the US, and I did a search for US registered trademarks and Francaise Des Jeux is not one of them, so can they really do anything about it anyway, legally?

Sure. File a UDRP with WIPO, you don't reply, and they can win.

Be thankful they don't have a US-based presence...so far.

 

[jberryhill]

Be thankful they don't have a US-based presence...so far.

I don't know why anyone thinks that is such a big deal. You can certainly be held liable for conduct in country A which is designed to harm the rights of a party in country B.

Here, it appears that the domain registrant perfectly well knew that a party in France was using a particular mark, and registered a similar domain name in order to exploit the rights of that party in France. That's enough inferred intent to bring a suit in France against that party. Then, upon obtaining a monetary award in a French court, the French party can use the relevant international agreements on court awards to nationalize that judgement in the parties home district in the US. That party would have an opportunity to defend against enforcement in the US, but only on the question of whether the French court had sufficient jurisdiction, not on any question relating to the merits of the claim.

What people believe is indeed, Dan, amazing.

 

[Dave Zan]

I don't know why anyone thinks that is such a big deal. You can certainly be held liable for conduct in country A which is designed to harm the rights of a party in country B.

Here, it appears that the domain registrant perfectly well knew that a party in France was using a particular mark, and registered a similar domain name in order to exploit the rights of that party in France. That's enough inferred intent to bring a suit in France against that party. Then, upon obtaining a monetary award in a French court, the French party can use the relevant international agreements on court awards to nationalize that judgement in the parties home district in the US. That party would have an opportunity to defend against enforcement in the US, but only on the question of whether the French court had sufficient jurisdiction, not on any question relating to the merits of the claim.

What people believe is indeed, Dan, amazing.

Hmm...hadn't really thought of that. Lesson learned.

 

[namedropper]

Sure. File a UDRP with WIPO, you don't reply, and they can win.

Actually, I think his chances are much worse than that. It seems bizarre to be using a long French phrase in the United States and trying to claim that he's not infringing a trademark in France. Where did this name come from? I don't think he can safely argue that the name just popped into his head without having already known about the trademark.

If we go by the three prong test used in UDRP, I can't see how this person could make a defense for the name and have any chance of winning.

Confusingly similar to their trademark? Spot on.

Bad faith? Well, if he heard of these other people and purposefully made the name because of that, what else would you call it?

No legitimate (non-infringing) use of the name? I don't see one. Perhaps he could make an argument to this effect. I don't know, but I'm personally doubtful.

Without knowing more, so far it looks to me like the French company has an easy win on their hands.

(Oh, and I see John posted while I was working on writing this. Thanks for that information, John.)

 

[jberryhill]

Hmm...hadn't really thought of that. Lesson learned.

How do people think Google gets sued in France?

"Google Loses Second French Trademark Lawsuit"
http://techdirt.com/articles/20050204/184247_F.shtml

I mean, krikey people, we don't live in caves anymore. We've had telecommunication, international mass communication, and international travel and commerce for decades now. The law moves slowly but it does not move so slowly as to have had a global economy develop over this time without noticing that, yes, someone in country A might do something that injures a valid legal interest of someone in country B.

That doesn't mean it's always easy to address those situations, but some Plaintiffs like a challenge.

 

[GT Web]

Will give you some advice:
If they do not have an trademark in the US they cant do anything and you wont get sued or either get in a problem so dont worry at all.

Because if they are doing an case, they have to prove their trademarkship for US too which they do not have as you stated.

So just dont worry.

remind me not to hire you if I'm ever involved in a UDRP case...

 

[Dale Hubbard]

What's worse is that the domain in question ends in the proper French singular form "jeu" instead of the plural "jeux". It has to be a typosquat doen't it?

 

[dnreg]

Thanks for everyone's input. Just to clarify, I saw the domain on a website that had "high ovt search-term drops" and the like, searched for it myself (without the x), and it said there were loads of searches. I had no clue what it was (the casino or whatever) 'til a while afterward, at which point I changed the links to ones dealing with casino types of sites. I only registered it for the traffic it was shown to have (search google for the domain, you'll see where I got it probably), and certainly didn't do it in bad faith. Now, if I were to keep it illegitimately I know it'd be wrong, I was only asking if they had a right to send this all to me, considering their country and mine, and considering my spelling. I think I've got my answers now, folks, and I thank you again for everyone's input.

 

[dotNetKing]

I must admit I've registered a lot of domains purely on numeric criteria like overture results and not found out until afterwards that there is a company with/using the same name.