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12|12|2008 10:33 pm EDT

Frank Schilling defends Joystick.com and PCJeux.com

by Chad Kettner in Categories: Legal Issues

Frank Schilling’s  Name Administration Inc. was able to defend it’s right of ownership for the domains Joystick.com and PCJeux.com after a French company filed a dispute through the World Intellectual Property Organization (WIPO). Although the panel concluded that the complainant failed to establish that the disputed domain names were registered and being used in bad faith, one panelist submitted a statement of dissenting opinion expressing that he believed PCJeux.com was registered in bad faith because it is a French term and the Respondent (Schilling) is a non-French language speaker.

The Complainant, Future France of Levallois Perret, publishes two widely read magazines in France by the names of “Joystick” and “PCJeux” (with a combined readership of 2 million) and owns French trademark registrations for “JOYSTICK” (Registration No. 92408539;  March 4, 1992), “PC JEUX, LE MAGAZINE DES JEUX SUR PC” (Registration No. 96612906;  April 5, 1996) and “PC JEUX” (Registration No. 063430986;  May 19, 2006).

While the complainant was able to establish that the disputed domains were identical or confusingly similar to the trademarks in which he has rights as well as demonstrate that the respondent has no rights or legitimate interests in the domain names, its dispute was denied since a majority of the three-person panel did not believe the domain names were registered and being used in bad faith.

After the majority finding decided that “for all the foregoing reasons…the Complaint is denied”, panelist Mr. Christophe Caron issued a statement of dissenting opinion arguing that PCJeux.com was registered in bad faith:

“I agree with my co-panelists that the Complaint, concerning the domain name <joystick.com>, should be denied.  I also agree that the domain name <pcjeux.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name <pcjeux.com>.  But I would not however make a finding about the registration and the use in good faith of the domain name <pcjeux.com>.

I believe that the registration of the domain name <pcjeux.com> has been made in bad faith.  In fact, the expression “pcjeux” is protected by several valid well known trademarks in France.  Since the bad faith registration is a question of intent, the Respondent, who is a non-French language speaker, obviously decided to choose, as a domain name, an expression well known in France, in the field of video games, in order to create a website hosting links to third party websites.

Furthermore, “pcjeux” is a distinctive expression in the French language because the distinctiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form.  And the syntactically unusual juxtaposition of the “pc” and “jeux” is not a familiar expression in the French language (but “jeuxpc” or “jeux pour pc” would be such a familiar expression).

From that point of view, the word combination in question may be viewed as an abnormal way of referring to the goods or of representing their essential characteristics in common parlance.

In conclusion, I believe that the registration, by the English-speaking Respondent of the French language domain name <pcjeux.com>, which is not a familiar expression in the French language but is identical to a well-known trademark in France, has been made in bad faith.

I also believe that the use of the <pcjeux.com> domain name has also been made in bad faith.  The Respondent uses the domain name only to host links to third party websites that offer goods and services in areas corresponding to the Complainant’s products and he derives revenues from that activity.  The Panel itself, in the present decision, “sides with many previous UDRP panels that have concluded that this activity, in and of itself, is not a bona fide offering of goods or services”.  And I believe that the Respondent intended to confuse French Internet users, who know that the expression “pcjeux” is well known in France, because he hosts especially French links on his website.  The Respondent intended to capitalize on the value created by the Complainant’s well known trademarks in order to derive revenue from merely hosting French language links to third party websites.  And the French Internet users are victims of that bad faith behavior.

In conclusion, I believe that the use and the registration of the domain name <pcjeux.com> have been made in Bad Faith.”

Thankfully the majority decision was spot-on, but it is still unsettling to have a WIPO panelist honestly believe that one must either be from France or at least speak French in order to register French-language domain names in good faith.

[Thank you to John Berryhill]

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21 Comments

Jeff

December 12, 2008 @ 11:45 pm EDT

Thanks for the write up Chad! Very interesting decision. Also, it’s scary the large number of UDRP cases brought against Frank recently – perhaps a sign of an even more hostile legal environment to come.

Chris

December 13, 2008 @ 1:20 am EDT

Being a English domainer living in France i also find it concerning that they seem to think a French domain registered to a non French speaker is in bad faith.
But one very important fact not brought up, is the common English mistake on French domains, as pointed out, the correct term in the French language would be jeux PC, of course an English speaking person wishing to register a domain coining that phrase would commonly put it the wrong way around PCjuex, this surely justifies the registration by a English speaker on the basis of misunderstanding of the French language as opposed to copy of a magazine or trade mark.

[…] here to wager the original: Frank Schilling defends Joystick.com and PCJeux.com | Domain Name News Posted in Domains on Dec 12th, 2008, 9:44 […]

John Berryhill

December 13, 2008 @ 2:15 am EDT

“one very important fact not brought up, is the common English mistake on French domains”

Your point is well-taken, and should have been obvious to the Panel, since we actually didn’t know it was an error until we read the decision.

D

December 13, 2008 @ 2:41 am EDT

Come on John, seriously? I’m all for domainer rights since I am one, but don’t insult our intelligence. Frank had to know what he was doing when he registered this domain in this particular order. There are very few coincidences in this business.

Chris

December 13, 2008 @ 8:43 am EDT

weather Frank knew or not i have no idea, but the mistake is a valid point, i know several domainers that have made the same mistake, and i too have done it even though my wife speaks fluent french.

would you register “domain name forum” or “forum domain name”?

“electronique cigarette” or “cigarette electronique”

RegFeeNames.com

December 13, 2008 @ 12:26 pm EDT

Glad to see Frank didnt lose these names – He seems to certainly have alot of WIPO againest him but if you own hundreds of thousands of names obviously you have more chance of a WIPO – Lets hope that he doesnt lose any names as I believe that Frank didnt register these in bad faith and is just a domain pro who seen the value of owning generics and keywords before most others did.

Regards,

Robbie

Dan

December 13, 2008 @ 1:05 pm EDT

Hi,

Very nice news to hear…congrats to Frank.

As For John…your the best!

Peace & Merry Christmas to: Adam,Frank M.,Frank ‘7mile Schilling’,John & MJ!

And to everyone else that post here.

Dan
AKA
“Danno” on Franks 7 mile Blog.

John Berryhill

December 13, 2008 @ 4:13 pm EDT

“There are very few coincidences in this business.”

Try reading the decision again. The pcjeux.com name was part of a portfolio of hundreds of domain names which were bought in a bulk purchase, and which included a number of foreign words and phrases. The presence of that name in the portfolio was unremarkable. It was not individually selected at all, but came with a package of mostly spanish, but other language domains.

Concerning names bought on a drop, it would be a waste of time to intentionally seek to register domain names, since the decision to buy or not buy a domain name is based on an eyeball review of thousands of names daily.

What was particularly striking in this case was the complainant’s claim that they had been publishing a magazine for years. Take a look at the archive.org records for joystick.fr, and you’ll quickly find out that someone was making things up in this proceeeding, and it wasn’t the respondent.

John Berryhill

December 13, 2008 @ 4:16 pm EDT

“Come on John, seriously?”

And, quite seriously, I don’t speak French, but I can use Google Translate, which is precisely what had to be done with much of the untranslated material filed by the complainant. If you put “pc jeux” into Google Translate (go ahead and check it out), it comes out “pc games”.

D

December 13, 2008 @ 4:25 pm EDT

I’m sorry John. I stand corrected, and appreciate your clarification. Congratulations on this win!

John Berryhill

December 13, 2008 @ 6:13 pm EDT

“it would be a waste of time to intentionally seek to register domain names”

Should be “to intentionally seek to register *trademarks* as domain names”

UFO.ORG

December 13, 2008 @ 6:55 pm EDT

These are generic terms, so its all right.

They could have been registered in bad faith, but the French have allowed many English words to be registered as French trademarks when in fact they lack distinctiveness in English speaking countries.

So what if if the domain holder cannot speak French, The panelists would be wise to understand that would be discrimination under EU law and is forbidden.

Are these domains coincidence? most likely, just like I guess he’s translated PC games into other useful languages as well. Smart move.

Now, lets start domain hunting on babblefish…. ;)

Verno

December 13, 2008 @ 10:49 pm EDT

I was actually wondering why a French company would have a trademark on an English term – “Joystick”.

According to my Google translator it should be – “manche à balai”.

They had to have known what they were doing…….

jaydee

December 13, 2008 @ 11:42 pm EDT

some say “potato” and some say “potatoe” (if you’re old enough, you’ll know)….semantics. Who are these panelists anyway, a bunch of old retired never-beens who all of sudden think they deserve their new-found power.

Jamie

December 15, 2008 @ 3:47 pm EDT

@ John “I don’t speak French, but I can use Google Translate, which is precisely what had to be done with much of the untranslated material filed by the complainant. If you put “pc jeux” into Google Translate (go ahead and check it out), it comes out “pc games”.”

Are you really relying on Google Translate to give you an accurate representation of what the other side is presenting in a court of law? I’m hoping you just used it to quickly try and get the gist of their documents, hoping for anything better than that from that tool will lead to pain.

John Berryhill

December 15, 2008 @ 7:04 pm EDT

“Are you really relying on Google Translate to give you an accurate representation of what the other side is presenting in a court of law?”

No, I was demanding that the other side follow the UDRP Rules, and present their filings in English, since that was the language of the registration agreement. Is that too much to ask?

What’s particularly funny is the notion that there is a “right” way to say “PC games” in French. Can you please tell me what the acronym “PC” stands for in French?

PC stands for “personal computer”. It’s not a French acronym in the first place.

However, the Complainant does not have a trademark for “PC Jeux” that pre-dates registration of the domain name, and an “accurate” translation is absolutely irrelevant to the state of mind of a domain registrant purchasing a portfolio of several hundred domain names, one of which was “PC Jeux” and which the domain registrant reasonably believed meant “PC games”.

So, explain this to me. Do the French really abbreviate “ordinateur personnel” (personal computer) as “PC”?

If they do, perhaps they might start learning and using their own language before lecturing others on how to do so.

Drew

December 16, 2008 @ 12:22 am EDT

The guy owns pcjeux.fr why would he need the .com? Like French people go to .com domains?

What really needs to happen is the owners of PC Gamer magazine need to take him to court for stealing their cover design. That’d teach him a lesson.

V

December 20, 2008 @ 10:57 pm EDT

I’m not sure what the legal definition of “bad faith” is in domain name registration.
However, I think if that someone registered a name with a French word that is not common in English (like Chic) in it and put links to French products on it, that person was probably not trying to get traffic from English speakers.

V

December 21, 2008 @ 12:13 pm EDT

“However, the Complainant does not have a trademark for “PC Jeux” that pre-dates registration of the domain name,”
I agree with the majority decision in this particular case for the reason Dr. Berryhill pointed out and I congratulate him on making that crucial point.

“What’s particularly funny is the notion that there is a “right” way to say “PC games” in French.”
Even though foreign words are used in a language, there are still rules about how they are used that follow the grammar of the original language.
In English, one would say – couture dresses, not dresses couture – because of the rules of English grammar.

“PC stands for “personal computer”. It’s not a French acronym in the first place.”
Dr. Berryhill is right in pointing out that PC is technically an acronym for Personal Computer in English.

“So, explain this to me. Do the French really abbreviate “ordinateur personnel” (personal computer) as “PC”?”
Dr. Berryhill is also right in that the French equivalent of personal computer is
ordinateur personnel.
However, if the point being made is that PC is a literal abbreviation of ordinateur personnel, I think the intent was more to amuse than persuade.

“Can you please tell me what the acronym “PC” stands for in French?”
PC is not an acronym in French, it is an adaptation.
Industry insiders often use terms popularized by the foreign country that originated or dominated their products. Anime and Manga come to mind.
However, even in English “PC” has come to have a more specialized meaning,
as any Mac Bigot would tell you. A Mac is a personal computer, (or ordinateur personnel) but fortunately, it is not a PC.

“If they do, perhaps they might start learning and using their own language before lecturing others on how to do so.”
I do speak French, but I am not an expert. That honor belongs to L’Académie française, who are very strict about making sure that French people do learn their own language and use it in a grammatically correct way. This is why the term “PC Jeux” would be distinctive in French.

V

December 22, 2008 @ 12:55 pm EDT

“The guy owns pcjeux.fr why would he need the .com? Like French people go to .com domains?”
Although google.com only provides two choices – google search and I’m feeling lucky, google.fr provides three modifiers – Web , Pages francophones and Pages : France.
A French reader of PC Jeux could easily choose Web and be looking for the magazine’s page, but end up at pcjeux.com.

“The pcjeux.com name was part of a portfolio of hundreds of domain names which were bought in a bulk purchase, and which included a number of foreign words and phrases. The presence of that name in the portfolio was unremarkable. It was not individually selected at all, but came with a package of mostly spanish, but other language domains.”
This defense seems to have worked in the past because an English speaker has a good chance of determining whether a phrase is generic, however, as this case shows, domain names with foreign phrases require more than a quick glance when they are in a package of hundreds of names.

“I don’t speak French, but I can use Google Translate,”
“If you put “pc jeux” into Google Translate (go ahead and check it out), it comes out “pc games”.”
While obtaining the services of a native speaker/human translator may be prohibitive, perhaps a search on google.(TDL of foreign word country of origin) might provide more useful results.

“Also, it’s scary the large number of UDRP cases brought against Frank recently – perhaps a sign of an even more hostile legal environment to come.”
I think this case is significant because more countries are entering the internet area and .com domains with foreign words (which seem generic in English) are becoming more valuable to the owners of the trademarks in those countries.
What I don’t understand is why they don’t seek to purchase them instead of hijacking them. Or did they try to purchase the name first and were refused in this case. I couldn’t tell.

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