Conflits entre noms de domaine et marques (renommées) : l'approche OMPI

The nineties revealed the growing economic importance of Internet ? and consequently domain names ? for the worldwide visibility of undertakings. However, so-called « cybersquatters » often usurped trademarks and other distinctive signs in order to deceive internet users or to get some profits by selling agreements. They remained unpunished most of the time because of the inadequacy of traditional responses to this mostly international issue. Therefore the Uniform Domain Name Dispute Resolution Policy (UDRP) has been established mainly on trademark holders? demand to tackle this problem. This procedure allows for a fast and cheap dispute settlement system put into force by several arbitration centres among which the World Intellectual Property Organization is the most important. However, even if this procedure has been applied now since 1999, it still is weak as regards the safeguard of due process principles. Moreover, an analysis of the decisions rendered by WIPO panels shows some discrepancies between panel decisions leading to legal uncertainty. Special attention has been given in the first WIPO Report to the « well-known or famous marks ». Two special mechanisms were provided : the exclusion as a gTLD registration of such trademarks and a stay of registration during the alternative dispute settlement procedure. None of them were finally put into place. Nevertheless, « famous » trademarks actually clearly enjoy favourable treatment in WIPO « case law ». Regarding general requirements necessary in order to disqualify a domain name, three conditions must be fulfilled. First, the domain name must be identical or confusingly similar to a trademark or service mark in which the complainant has rights (which is easier to demonstrate for famous marks). Second, the respondent should have no rights or legitimate interests in respect of the domain name. Third, the domain name must have been registered and be used in bad faith (which is almost always the case when famous marks are involved). Theoretically, these conditions seem well balanced, and, if strictly applied, are acceptable. However, in practice, some theories or ways of constructing these requirements show a « pro-trademark bias », e.g. the « opportunistic bad faith » test. This led some scholars to harshly criticize this procedure. Also the « success by default » trend ? as one author called it ? has a clear influence upon the final outcome of decisions reached by the panels. Finally, the « suck site » issue also reveals tensions between trademark protection and freedom of speech. The balance is hard to find in this matter and a few decisions only ? all issued by American panellists ? favoured the latter at the expense of the former. Ensuring effectiveness of the procedure and balanced decisions is of major importance as UDRP is the principal blueprint for any alternative dispute settlement procedure regarding domain name litigation, which is or which might be put into operation elsewhere in the world.