Conflicts between domain names and distinctive signs: risks and protection

By Yasmine EDDAM1 May 2025

Conflicts between domain names and distinctive signs are on the increase. Brands, trade names, surnames or geographical indications can collide with similar domain names. These situations expose companies to real legal risks. Prevention becomes crucial to protect your digital identity.

Risk of conflicts with brands

Use of a domain name similar to a trademark

The most frequent conflict is between trademark holders and holders of similar domain names. Under articles L.713-2 and L.713-3 of the French Intellectual Property Code, these situations are potentially infringement cases.

Case law has evolved on this point. An important decision by the Court of Cassation on 13 December 2005 ("Locatour" ruling) made it clear that the bare registration of a domain name is not enough. Actual use remains necessary to establish infringement.

In this way, the courts punish the use of a domain name that infringes an earlier trademark for identical or similar goods or services.

Notion of risk of confusion online

The likelihood of confusion is the central element in these disputes. Judges assess this by taking into account..:

Visual, phonetic or conceptual similarity
Products or services concerned
The target audience

This risk is assessed differently online. The domain name appears to be an integral part of the Internet medium. The Versailles Court of Appeal ruled that "it cannot be accepted that any owner of a trade mark registered in class 38 can prohibit anyone from having a presence on the Internet" (27 February 2003).

The courts examine the content of the site associated with the name to assess the actual activity of its operator. The simple use of a common technical medium does not generate confusion.

Special case of well-known trademarks

Well-known trademarks enjoy enhanced protection under article L.713-5 of the IPC. This protection extends beyond the goods and services designated in the registration.

Owners of well-known trademarks find it easier to stop unauthorised use. However, the Court of Cassation has qualified this protection. If the trademark, although well-known, corresponds to a common term, the use of this word in its usual sense does not constitute an infringement (20 February 2007, "Milka" ruling).

Cybersquatting particularly targets these well-known trademarks. This practice consists of registering well-known trademarks as domain names and selling them back to their rightful owners.

Conflicts with other identifiers

Trade and company names

The collision between a domain name and a trade name falls under the heading of unfair competition. The Court of Cassation has ruled that "the use of a trade name in a domain name, which undermines the identification or advertising function of the trade name previously used by a competitor operating in the same sector of activity and in the same geographical area, constitutes an act of unfair competition" (7 July 2004).

This protection presupposes prior use of the trade name and a real risk of confusion. The similarity of the activities plays a decisive role in the judges' assessment.

Company names enjoy comparable protection against misappropriation in the form of domain names.

Surnames and pseudonyms

A patronymic is a personality right that is protected against unwarranted appropriation. The registration of a person's name as a domain name by a third party may constitute a manifestly unlawful disturbance.

The Nanterre court thus cancelled the registration of domain names using the name of a well-known sportswoman (13 March 2000, "Mauresmo" case). The judge ruled that this registration prevented the sportswoman from using her own name.

Pseudonyms enjoy similar protection when they clearly identify a person. One court has prohibited the use of "comtedeparis.fr" as a domain name (TGI Paris, 2 December 2009).

In certain cases, article L.226-4-1 of the French Criminal Code on identity theft could apply to the malicious use of another person's name.

Geographical indications and community names

Geographical indications and community names raise specific issues. The Dijon court annulled a domain name that included a protected wine appellation.

In the case of names of municipalities, case law assesses the risk of confusion in the mind of the public. The Court of Cassation has specified that judges must look for the existence of a manifestly unlawful disturbance resulting from such a risk (10 July 2012, "marmande.fr" case).

Country names are the subject of international debate. An emblematic dispute pitted South Africa against the holder of "southafrica.com". The .eu regulations explicitly protect the "geographical and geopolitical names" of Member States.

Preventive protection

Defensive registration strategy

Effective protection starts with preventive registration:

Names that match your brands and distinctive signs
In the main TLDs (.com, .fr, .net)
Common spelling variants
Relevant combinations (name-activity.extension)

This defensive approach costs less than litigation. Our complete guide to domain name law details these strategies for companies.

Monitoring new deposits

Constant monitoring of new registrations similar to your distinctive signs enables rapid action. Specialised service providers offer:

Alerts for similar names
Monitoring new extensions
Monitoring strategic name abandonments

Exploiting a prior name considerably strengthens the legal position of the owner, as explained by our analysis of the legal status of domain names.

Protective contractual clauses

Contractual protection completes the preventive system:

Domain name reservation clauses in commercial contracts
Non-competition undertakings including a prohibition on registering similar names
Specific clauses in employment contracts for key employees
Coexistence agreements for the peaceful settlement of parallel uses

These preventive legal tools often avoid costly litigation.

Resolving existing conflicts

Extrajudicial options

There are several alternative mechanisms for resolving disputes:

UDRP procedure for generic extensions
SYRELI procedure for .fr domain names
Mediation and direct negotiation

The UDRP procedure requires proof of three cumulative elements:

The domain name is identical or similar to a trademark
The holder has no legitimate right to this name
The name has been registered and used in bad faith

These procedures offer quicker and less costly solutions than legal action, as detailed below. our article on domain name disputes.

Legal action

The traditional legal channels remain available:

Infringement proceedings for trademark owners
Action for unfair competition or parasitism
Summary proceedings in cases of manifest urgency

The choice depends on previous rights, the evidence available and the objectives pursued (termination, transfer, compensation).

Possible sanctions include:

Prohibition on use of the disputed name
Transfer of the name to the applicant
The award of damages

The best protection is constant vigilance and responsiveness. Conflict prevention requires a global strategy for protecting distinctive signs, including domain names.

Our expert lawyers in domain names and intellectual property will support you in developing this strategy and in resolving existing disputes.