In the D2019-3175 UDRP decision, the parties (Orfeva SARL and M. V. A.) dispute the domain name <medailledebapteme.com>, which, in French, means “baptism medal” or “baptism medallion” (WIPO, D2019-3175, Orfeva SARL v. V. A., 11, March 2020, in French). What is striking when reading this decision is that this dispute should never have been brought before a third-party decision-maker of the Arbitration and Mediation Center of the World Intellectual Property Organization, for two reasons: one of a strategic nature; the other legal.
Strategic mistake: dropping the domain name
It follows from the explanations of the complainant that its legal representative (in other words, the company itself) had “made a choice not to renew the the domain name ”<medailledebapteme.com>. Orfeva SARL had deliberately taken over this domain name in circumstances which, unless proven otherwise, have made it fall into the category of res derelictae, that is to say things “which may be acquired by occupation after abandonment by their owner ”(G. Cornu, Vocabulaire juridique, PUF). The abandonment of the domain name <medailledebapteme.com> is inconceivable, disconcerting. Never give up a domain name that describes the business of the company, especially if it includes the top-level domain .COM. Two years later (which is an extraordinarily long time), the domain name was re-registered, and therefore occupied, by a competitor, M. V. A. Following the theory of ownership, the domain name <medailledebapteme.com> has thus become the property of M. V. A. However, the theory of ownership alone is not sufficient to justify the appropriation, by a third party, of an abandoned domain name. Indeed, the principle of freedom of trade and industry provides further explanations.
Legal mistake: the descriptive nature of the trademark
Orfeva SARL is the holder of the French word trademark MEDAILLEDEBAPTEME.FR n ° 4091939 (“baptism medal” or “baptism medallion”) which designates, in particular, but above all, class 14 of the Nice classification (jewelry). Strengthened by what it estimates to be a property right enforceable against all, Orfeva SARL has therefore attempted to exclude anyone from the possibility of using the expression “Baptism Medal” to designate, in trade, articles of jewelry. However, such a view of trademark law ignores the freedom of trade and industry, a fundamental principle which erases descriptive marks. In this sense, article L. 711-2-2° of the French Intellectual Property Code is explicit: a trademark devoid of distinctive character cannot be validly registered, and, if they are registered, such a trademark is likely to be declared void”.
However, the MEDAILLEDEBAPTEME.FR trademark designates… baptism medals. Even the concept of “weak trademark” could not apply to such a descriptive trademark. In short, this trademark should not exist any more than the procedure D2019-3175. However, to temper our point, Orfeva SARL can be satisfied to have chosen the extrajudicial route since, unlike the judge, the third-party decision-maker does not have the power to declare a trademark void. Before a judicial court, the opposite party would likely have raised a counter-claim to that effect. Although it is not so sure since, in this case, the respondent is also the owner of a trademark which could also be considered devoid of distinctive character, namely the French semi-figurative trademark n ° 4230803:
I recognize that by invoking French law, I am deviating from the legal regime of the UDRP, but I invariably maintain that in the presence of parties of the same nationality or having their registered office in the same country, it can be legitimately referred to the legal corpus of the said country. This position finds justifications in the idea that the extrajudicial decision necessarily produces legal effects in the legal order of the concerned country. Nevertheless, we have to make sure that the third-party decision-maker does not assume the powers that he does not have. And anyway: Nemo censetur ignorare legem!
In summary, it may be necessary to register (and keep!) domain names descriptive of the business carried out. Better to integrate them into the company’s portfolio rather than seeing them enrich the competitor’s one. Also, if used correctly, such domain names can help improve the SEO of the website. On the other hand, it is utterly useless to file applications for descriptive trademarks since, incurring the nullity at any time, they have no legal value and, therefore, no financial value.
