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Domain name disputes: legal and alternative procedures

By Yasmine EDDAM1 May 2025

Disputes over domain names are on the increase. The strategic value of these digital identifiers explains this trend. There are several ways of resolving disputes. The choice between traditional legal procedures and alternative mechanisms often determines the outcome of the dispute. Knowledge of these options is a decisive advantage.

Traditional legal proceedings

Infringement action

Infringement proceedings enable the owner of a trademark to stop unauthorised use of its sign. It applies to domain names that reproduce an earlier trademark for identical or similar goods or services.

Three essential conditions must be met:

A validly registered trademark
An identical or similar domain name
Actual use for products/services covered by the trademark

The Court of Cassation has ruled that the registration of a name without use is not sufficient ("Locatour" ruling of 13 December 2005). This position limits the effectiveness of infringement proceedings against simple defensive reservations.

Penalties include:

Prohibition on use of the disputed name
Publication of the decision
Damages

Action for unfair competition or parasitism

An action for unfair competition sanctions the use of a domain name that infringes the rights of a competitor. It is based on article 1240 of the French Civil Code.

This action is useful when:

The applicant does not own a registered trademark
He uses a trade name, company name or sign

The Court of Cassation has ruled that "the use of a trade name in a domain name, which undermines the identifying function of a trade name previously used by a competitor operating in the same sector of activity, constitutes an act of unfair competition" (7 July 2004).

Parasitism is the undue exploitation of another's reputation, even in the absence of a competitive situation. This qualification applies to cases of speculative registration of well-known names.

Emergency measures and summary proceedings

The summary procedure makes it possible to obtain interim measures quickly in urgent cases. The applicant must demonstrate:

A clear infringement of his rights
Imminent harm requiring intervention

The interim relief judge may order:

Suspension of use of the disputed name
Setting up an information message
Technical expertise

These provisional measures often precede an action on the merits. They secure the situation while the case is being investigated.

Alternative dispute resolution procedures

The UDRP procedure for generic extensions

The Uniform Domain Name Dispute Resolution Policy (UDRP) mainly concerns generic TLDs (.com, .net, .org). Created by ICANN in 1999, it offers an alternative to the courts.

The applicant must prove three cumulative elements:

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

Decisions are handed down by administrative commissions in around 60 days. More than 30,000 decisions have been handed down since its creation.

Possible sanctions are limited to:

Transfer of the name to the applicant
Deleting the recording

This procedure offers significant advantages:

Speed (60 days as opposed to several years in court)
Moderate cost (around €1,500 for a name)
Direct execution by registrars

Its contractual nature explains why the Paris Court of Appeal ruled that it "does not constitute arbitration" (17 June 2004).

The SYRELI procedure for French domain names

The SYRELI procedure (Dispute Resolution System) applies to .fr domain names and other French domains. Set up by AFNIC, it is based on article L.45-6 of the French Post and Electronic Communications Code.

The applicant must prove his or her interest in taking action and show that the disputed name falls within one of the cases provided for in article L.45-2 of the CPCE:

Infringement of public order
Infringement of intellectual property rights
Imitation of a local authority

The procedure lasts a maximum of two months. The possible sanctions are identical to the UDRP: transfer or cancellation.

SYRELI has some very specific features:

Fully electronic procedure
Decision handed down by AFNIC itself
Fixed cost of €250
Possible recourse before the court

Other specific mechanisms

Other mechanisms exist for specific extensions:

ADR procedure for .eu
URS (Uniform Rapid Suspension) procedure for new extensions
National procedures for certain country codes

These procedures vary in their criteria, costs and deadlines. Our complete guide to domain name law details these options.

Comparative analysis of different procedures

Advantages and disadvantages

Legal proceedings:

Advantages: wide range of penalties, compensation available
Disadvantages: duration, cost, probationary complexity

Alternative procedures:

Advantages: speed, simplicity, predictable cost
Disadvantages: limited penalties (no compensation), legal recourse possible

Alternative procedures are suitable for simple cases of obvious infringement. Legal action is required for complex situations or when compensation is sought.

Litigation selection criteria

The choice of procedure depends on a number of factors:

Nature of the rights invoked (trademark, trade name, etc.)
Extension concerned (.com, .fr...)
Objective (transfer, compensation, etc.)
Urgency of the situation
Available budget

The litigation strategy must be adapted to the specific case. Precautions when registering considerably reduce the risk of conflict.

Scope of decisions

UDRP decisions are not res judicata. A judicial appeal remains possible within 10 days of notification.

SYRELI decisions may be challenged before the courts within 15 days.

Final court decisions are binding on the parties. Their enforcement may require additional measures, depending on the country concerned.

Effective litigation strategies

Choosing the appropriate procedure

An effective strategy starts with choosing the right procedure:

UDRP for simple cases of trademark infringement (.com, .net...)
SYRELI for disputes over French names (.fr)
Legal action for complex cases or compensation claims

A combination of several procedures may be appropriate. Summary proceedings followed by a UDRP offer immediate protection and a definitive solution.

Preparing your file

The quality of the case often determines the outcome of the dispute. Essential elements include:

Proof of prior rights (trademark certificates, Kbis extract, etc.)
Proof of bad faith (correspondence, offers to sell, etc.)
Detailed comparison of signs in conflict
Proof of use and reputation

These elements must be organised logically to facilitate analysis by the referees or judge.

Monitoring and implementing decisions

Obtaining a favourable decision is not enough. Implementing it requires vigilance and follow-up:

Notification to the registrars concerned
Verification of effective transfer
Post-litigation monitoring of new similar registrations

The help of a specialist lawyer is often crucial in navigating these complex procedures. Visit conflicts between domain names and distinctive signs require specific expertise.

Sustainable protection of digital identity

Preventive approach

Prevention remains the best strategy. It is based on:

Preventive registration of strategic names
Watching for new similar filings
Regular documentation of usage
Technical name security (transfer lock)

These measures considerably reduce the risk of disputes.

Portfolio management

Active management of the domain name portfolio:

Regular inventory of names held
Rationalising renewals
Adapting to changes in the business
Tax and accounting optimisation

The value of a well-managed portfolio of names far exceeds the cost of registration.

Securing your digital assets deserves specialised legal support. Our intellectual property law firm offers you personalised advice on how to protect and defend your domain names effectively.