Virgin loses fight for non-distinctive domain name

In Virgin Interactive Entertainment Ltd and Virgin Interactive Entertainment SARL v France Telecom and BDDP-TBWA the English and French subsidiaries of Virgin Inc contested the use of their domain name 'vie.com' by France Telecom in its advertising slogan "Bienvenue dans la vie.com". Their claim was based on the grounds of trademark infringement.

The Court of First Instance of Paris considered that in order to justify the protection of a domain name, a plaintiff must establish the following:

• its right to the claimed name;
   
• its prior use of the name; and
   
• risk of confusion to the public.

The plaintiffs in this case did not prove that 'vie.com' had been transfered to them by their parent company, nor did they prove actual prior use. The court therefore rejected their claims. On appeal, the Paris Court of Appeals affirmed the lower court's ruling.

This case is useful in confirming the conditions that must be satisfied for a domain name to be protected. It also seems to show that a domain name must be distinctive to receive protection.

Arnaud Diméglio and Frédérique Dupuis-Toubol, Bird & Bird, Paris