France prevails in ‘France.com’ TM dispute in US court
The French government has secured a trademark victory over ‘France.com’ after a US federal appeals court ruled that it was not liable for infringement claims levied by a tourism company.
The decision was handed down by the US Court of Appeals for the Fourth Circuit on March 25, 2021.
Circuit Judge Diana Gribbon Motz, alongside Judges Henry Floyd and Allison Jones Rushing, held that the French government did not engage in activities that would invalidate its sovereign immunity when it gained the rights to the domain name in a French court six years ago.
A long-running trademark battle
The dispute stems from Jean-Noël Frydman’s acquisition of the ‘France.com’ domain name in 1994 for a California-based tourism company aimed at promoting US travel to France.
A US citizen and resident of Miami, Frydman told WIPR that he originally envisaged the website as a portal for Americans to discover France. He added that for many years, he enjoyed a close relationship with the French tourism board, Atout France.
But this relationship soured when Frydman sued a Dutch company in the Tribunal de Grande Instance de Paris (Paris District Court) in 2014 for trademark infringement, and the French Republic and Atout France intervened, insisting that they alone held exclusive rights to the domain France.com.
They contended that, according to French law, the name ‘France’ cannot be appropriated or used commercially by a private enterprise because doing so violates the French Republic’s exclusive right to its name and infringes on its sovereignty. They further asserted that ‘France’ expresses the country’s “geographic, historic, economic and cultural identity”.
According to Frydman, he attempted to ward off the lawsuit by offering a deal to the French government—if he could find a buyer for the domain, he would give Atout France the first right of refusal on a matching bid.
The agency rejected the offer, and the Paris court ruled in Atout France’s favour.
With the Paris court judgment in hand, Atout France contacted the domain host, Web.com, which subsequently transferred ownership to the French agency.
Frydman appealed but in 2017 the Cour d’Appel de Paris (Paris Court of Appeals) upheld the lower court’s decision, affirming that “the designation ‘France’ constitutes for the French state an element of identity akin to the family name of a natural person”.
France.com has appealed to the Cour de Cassation (French Supreme Court), where the case is now pending.
In 2018, the European Union General Court also found that “France.com” cannot be registered as a trademark because it is too similar to a previous mark registered in 2010 by France.
US lawsuit against the French Republic
France.com later sued the French government at the US Court for the District Court for Virginia for cybersquatting and trademark infringement. The travel company alleged that the defendants engaged in cybersquatting and reverse domain name hijacking in violation of the Anticybersquatting Consumer Protection Act, trademark infringement, federal unfair competition, and expropriation.
France moved to dismiss the case, asserting sovereign immunity under the Foreign Sovereign Immunities Act (FSIA). The district court denied the motion, concluding that entitlement to immunity “would be best raised after discovery has concluded”.
France appealed, and this week the Fourth Circuit reversed the judgment of the district court and remanded the case with instructions to dismiss the complaint with prejudice.
The court held that the US Supreme Court has deemed sovereign immunity a threshold question that should be addressed “as near to the outset of the case as is reasonably possible,” and consequently held that France was immune from the claims.
“The corporation’s claims arise from an adverse judgment of a foreign court—in a proceeding initiated by the corporation itself—resulting in the transfer of the domain name, not any commercial activity that may have followed that transfer. Accordingly, the commercial activity exception to FSIA immunity does not apply,” said the court.
The judges also rejected France.com’s assertion that the French courts were biased. The travel company had failed to provide evidence to suggest that it “did not receive a full and fair (and lengthy) opportunity to present its position”, said the court.
“The corporation argues repeatedly that the French court applied French law in a way that conflicts with or is ‘hostile to’ the laws of the US. Even if this is accurate, it does not demonstrate a violation of international law, as is required to satisfy the expropriation exception to FSIA immunity,” concluded the court.
At the launch of the US suit, Eve Brown, of counsel at Barton Gilman, and a member of Frydman’s legal team, told WIPR that the transfer of the domain to Atout France without compensation to Frydman was a “grave injustice”.
“You just can’t own a geographic term. And when you file a trademark that contains a geographic term, you have to disclaim it and say that you don’t own exclusive rights to that particular term, and that’s exactly what Jean-Noel did,” Brown said.
However, Géraldine Arbant, partner at Bird & Bird in Paris explained that the French government’s actions were consistent with normal practice in the country.
“While it could be seen as something of a cavalier approach, the French government's actions echo the French Postal and Electronic Communications Code,” Arbant said.
The code states that domain names can be transferred “when it is identical or related to that of the French Republic”, she added.
