The destination criterion in connection with trademark infringement over the Internet
Team Reager AB, a company governed by the laws of Sweden, specialized in designing products and services for mobile phones, created an innovative “hands-free kit” called “Moobitalk”.
In order to ensure the sustainability of this product’s exploitation, the company filed the Community word mark “Moobitalk” on October 19, 2010.
However, it noticed that Mr. X, head of certain companies offering communication services grouped around the suffix “moobi” in the Middle-East and more particularly in Yemen, registered the domain name “moobitalk.com” on April 17, 2011 (that is to say after the aforementioned “Moobitalk” trademark) and accordingly requested transfer for its benefit of said domain name to WIPO in the course of a UDRP proceeding.
Such transfer was granted to the company Team Reager AB pursuant to a decision dated July 29, 2013.
Mr. X appealed to the Paris Court of Appeal which reversed the WIPO decision and recalled that if the use of a distinctive sign as a domain name over the Internet can constitute a use in the course of trade within the meaning of article 9 of the European Council Regulation (EC) n°207/2009 dated February 2009 (necessary condition to constitute the act of infringement), such use can only constitute an act of trademark infringement provided that the intended audience of the litigious website is located in the European Union territory.
In accordance with this principle and noting that, despite the identical feature of the “Moobitalk” trademark and the disputed domain name, the website associated with this domain name (i) is drafted in English or Arabic and (ii) offers eight versions each aimed at consumers of eight countries of the Near and Middle-East (Jordan, Kuwait, Iraq, United Arab Emirates, Palestine, Saudi Arabia, Morocco and Mauritania), the Court of Appeal ruled that the public located within the European Union territory was not a target of the website and that infringement was therefore not established.
The Court of Appeal further specified that the “.com” extension is common to all countries and accordingly does not convey any geographical indication. It does not necessarily reflect a willingness to reach the public everywhere in the world and more particularly in the European Union territory.
Whereas this decision is settled and established case law, it does stress to the right holders the limits of trademark law which are closely linked to its territoriality. In order to avoid similar inconveniences, it appears essential to establish a strong strategy for protecting trademarks and domain names portfolio. The trademark owner could have registered the domain name corresponding to its brand in different extensions (including .com, .eu, .biz, etc.) and/or plan to file its trademark in more appropriate territories.