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Court rules France can keep France.com

The French Republic used French courts to wrest the domain away from an American company.

Screenshot of France.com before it was taken over by the French Republic
A U.S. Court of Appeals has found in favor of The French Republic in a fight over France.com.

The United States Court of Appeals for the Fourth Circuit has delivered a blow to the former owner of France.com.

Jean-Noël Frydman registered France.com in 1994 and used it for many years to promote tourism in France. In 2014, Frydman’s company France.com, Inc. filed a lawsuit in Paris against a Dutch company alleging trademark infringement of France.com. The French Republic and its tourism agency, Atout France, intervened in the matter.

The French government managed to convince successive courts that the government — not someone in the U.S. — should own France.com. The government asserted the exclusive right to use the term “France” commercially, contending that under 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.

In 2018, the French government presented a copy of the Paris Court of Appeals decision over France.com to Web.com, and Web.com transferred the domain to it.

Transferring this domain, which was registered to a U.S. business, to France was a big blow that many in the domain industry viewed as unjust.

Frydman sued in U.S. court in 2018. The French government convinced the Court of Appeals (in a decision published today) that the government has sovereign immunity under the Foreign Sovereign Immunities Act. The court remanded the case back to the district court with instructions to dismiss the lawsuit.

You can listen to Frydman’s saga in this podcast interview from 2018.

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  1. Bul says

    Andrew, I am going to pick your article for the first time in years of reading your blog. The issue is the way you’re using the word “convince(d)” in the article. I am having trouble relating that word to how courts of law work well knowing that the issue at question is wether, France, as a sovereign state, has rights to its name, given that it has a law, forbidding anyone from appropriating its name. I would argue that given that the businesses Mr. Frydman conducted related to France (the sovereign), then it is natural to assume that the law would apply to him as well. I’d find it even a stretch to think that had Mr. Frydman owned a brand with a registered trademark that had nothing to do with France, he might have had a shot but that by itself would be a legal question that would require legal interpretation and testing rather than convincing. But I could be seeing things differently.

    • Ip guy says

      Except that Mr. Frydman seems to own a US trademark for France.com and in the United States, you cannot claim ownership of the name of a geographic area. This is a US court saying that France’s laws about who should own what trumps someone’s guaranteed protections under US trademark law. This seems huge.

      • Roberto says

        “….who should own what TRUMPS someone’s guaranteed protections…”, nice work, now you’ll QAnon in the mix.

      • Bul says

        Sorry for the late reply. That it would be reasonable for the US Court to conclude in line with what the decision of the French courts given that matters of trademark generally transcend borders.

    • Andrew Allemann says

      @Bul, I use the word “convinced” referring to court proceedings frequently. I look at that as what you do when you go to court: you convince the judge or jury. However, my wording “managed to convince” is perhaps a bit editorial.

  2. Gregg P. says

    This is one of those cases where it feels like they came with their desired conclusion and wrote their justification afterwards. Anyone who experienced injustice in the courts knows what it feels like. It sucks.

  3. David says

    This may open a whole new door.
    1.- Every country may try to go after their respective country.com
    2.- Under this assumption nobody can have a domain
    productsoffrance.com or madeinfrance.com

  4. John says

    This is a blatantly crooked, corrupt, unjust, dishonest decision, un-American, anti-American, without integrity or regard for right and wrong, a disgrace to everyone responsible.

  5. Jon Schultz says

    It doesn’t look like this affects all geo domains:

    “[T]he Corporation itself invoked the power of the French courts. Only because it did so could the French State intervene in that action to obtain the result challenged here.”

    • David Castello says

      It doesn’t, especially US Geodomains, but I would be a tad nervous if I owned Paris.com.

  6. David Castello says

    Historically, two of the most aggressive litigants against domain name owners have been the French and the Olympics.

    • joelle says

      and the Red Cross. It’s not fair but the owner chose poorly. If you’re in the domain name business you just sort of need to accept and roll with the reality that you’re going to loose names from time to time. Isn’t fair or right, but it’s the reality of the game.

      • snoopy1267 says

        What will an attorney confirm?

        I think it is fairly obvious that this will put people off buying those names, and may encourage other governments to try legal means.

          • John says

            JN Frydman takes the lead.

            https://www.biblegateway.com/passage/?search=Proverbs+18%3A17&version=NASB

            What about Web.com’s role in this? Was it even right for them to do what they did without a US court order from a US court of proper jurisdiction? What if a whole host of countries decided to try something similar, let’s say when someone uses the country name to criticize its government and policies for example? Let’s add the commercial element too, e.g. the domain is used to criticize but is also monetized. “Hello, our court has determined this domain must be transferred to us, kindly comply.”

        • john berryhill says

          An attorney will confirm a very basic concept relating to foreign court proceedings.

          If you are in the US, and you are sued in another country over something, then you have an initial choice to make which is going to end up being very important. Under various international treaties, a judgment in one country can be enforced in another country. However, if enforcement of a foreign judgment is sought against you in the US, you can challenge that foreign judgment in the US if certain conditions are met. One of those considerations is whether, despite your objections now, you nonetheless appeared in the foreign case, and had due process in that court.

          In this particular circumstance, there would not even have been a court case in France in the first place, absent the domain registrant having started it.

          You can’t go to France, pick a fight, voluntarily subject yourself to what the French court decides under French law, and then say “I didn’t like the result and should not be subject to the outcome.”
          Are you really saying that Americans should be able to bring actions in foreign courts, but only need to accept the results if they win?

          Now, sure, the registrant here did not expect the French government to intervene in the case, but if you go into some other country to pick a fight in their court system, then “I didn’t know that could happen” is pretty weak sauce.

          There was no legal proceeding in France until the domain registrant started one.

          I have commented on this case in the past, when it was my (incorrect) understanding that the registrant was initially the defendant in the French action, and had made the mistake of appearing in it, instead of mounting a challenge in the US. I had not realized the registrant had started the action.

          You buy the ticket, you ride the ride.

          If your takeaway is that this decision generally jeopardizes geo names, then you simply don’t understand what happened here.

          But, seriously, are there actually people here who think they should be able to go into foreign courts, sue people, and then claim they shouldn’t be bound by the result?

          • JN Frydman says

            John,

            I believe you’re missing a crucial point here. I did not go to the French courts to sue France. I did so because a 3rd party had registered European trademarks for France.com. Where else, but in a Eurpoean court could I have possibly started a lawsuit about European trademarks?

            The iFrench lawsuit was not about the domain name and it did not implicate the French state. And we had reached an agreement and filed it at the court before the French state intervened. But the judge accepted the State’s argument that it could still intervene in a case that was, for all legal purposes, over.

            Also, and this is another important point: there was, and there is NO law in France that says that the word France is protected. There is now a decision from the French court of Appeals that says that the word France is protected because it is akin for the French state to the right of publicity. This is still being litigated in France at the highest court. France has never sued any other company or individual with regards to the supposedly illegal use of the word France in a commercial activity.

            In my opinion it’s pretty clear that the French state bent French laws to simply steal the domain name from me. I find it strange that you would defend such actions.

          • Gregg P. says

            What if the Owner happens to be in a hostile jurisdiction to begin with? Take Tahiti.com for example with an office in French Polynesia (French territory). How would you assess their risk?

          • joelle says

            @JNF – it’s a snowball. When you went to France to fight about the TM you got sucked into the system, poked the bear (France). and the bear made a special rule for you. You should have filed a separate action in the US seeking a declaratory judgement that “France is not a trademarkable term or that your use was fair game. Sorry you lost the name.

  7. David Castello says

    France already has a very successful country code (dotFR) with over 3.5 million registrations. They have every right to play hardball with it. But dotCOM? Total overreach.

    • john berryhill says

      Here’s a free tip for you. If you have Spain.com, don’t file a lawsuit in Spain claiming you have trademark rights, and then call it “overreach” if you don’t like the outcome of the fight you started.

      • IP guy says

        Except that is not exactly right. If France believed that they had an enforceable order from a French court, then the process is to domesticate that ruling in the United States. I don’t believe they did that here. I believe the order you are talking about from France said there should be a voluntary transfer of the domain name, but since it was US property in the United States the French court would not have had jurisdiction to order of the transfer. Reading the complaint online, it looks like this is a trademark infringement suit, so I’m not sure what that would have to do with the French ruling anyway. It seems like it would have everything to do with how the trademark was being used or not used – Something seems off here

        • John Berryhill says

          “If France believed that they had an enforceable order from a French court, then the process is to domesticate that ruling in the United States.”

          What many people fail to realize is that the UDRP is about more than just the domain arbitrations conducted by WIPO, NAF, et al.. The UDRP also controls what registrars are supposed to do under Paragraph 3:

          “3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:

          b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action”

          So, as was recently at issue in another set of circumstances, registrars do need to consider whether a foreign court order in relation to a customer domain name was issued by a court of “competent jurisdiction”.

          It is very hard to argue that the court lacked jurisdiction over an action in which the domain registrant was the one who initiated the action. And while one can certainly sympathize with Mr. Frydman’s comment above that he did not intend for the proceedings to go in the direction which they did, the bottom line is that if you initiate an action in a court somewhere, then you are opening yourself up to whatever can happen in that court.

          The fact that the matter is still under consideration in the French legal system is great. Maybe it will be sorted out eventually in the French legal system. But that only brings us back to a situation where “the registrant will accept the outcome in France, so long as it is in his favor.” If you want to ride that pony to the finish line in the French legal system, that’s fine. I sincerely hope that the original domain registrant ultimately prevails. But what the Fourth Circuit is saying here is that’s the racetrack this jockey picked, and that is also consistent with my comments on this case in the past, and the consequences of deliberate and voluntarily availment of a foreign legal system.

          That’s also true of the Oxley situation. Mr. Oxley’s problem is in Arizona – where the domain name contracts are based and where the domain names were locked – and not in India where a frivolous suit was filed. But rather than to go after the problem at its root in Arizona, Mr. Oxley pursued action in Texas, which is also not relevant to the registration contract situs (see, e.g. Weingrad v. Telepathy). But at least Mr. Oxley did not, AFAIK, show up in India and effectively concede the game there. So, while GoDaddy was ill-advised to lock the names on the basis of a lack of competent jurisdiction over them in India, Mr. Oxley was equally ill-advised to pursue an action in Texas, where the domain names are likewise not located. Just because two people are arguing does not make either one of them “correct”.

          It’s unfortunate that the government of France intervened in the case, which was originally about competing overreaching trademark claims between two private parties in what is fundamentally a geographic term used as a geographic reference in relation to the subject matter at hand. But once you strap yourself into the seat, you aren’t getting out until the ride has come to a complete stop.

          • JN Frydman says

            John, I’m going to assume you did not read the French judgment, not the English translation.

            One frustrating aspect of this case is that no one has read the French judgments, so everything is based on legal hearsay.

            If commenters had actually read the decision, they would know that the issue is not with the legality of the French decision, per se. But how France used that decision to assert rights the French courts did not give it, France, in its actions, violated the French court decision. And it did so in the US. Pure and simple.

            Can we agree that France can’t have it both ways: by declaring the French court decision as sacrosanct, and then violate it as soon as it is rendered?

          • IPguy says

            but does the UDRP in your view trump U.S. Trademark law? I understand, but disagree, with what your take is on the ability of the domain name transfer – but this decision also dismisses with prejudice the person’s trademark infringement suit, right? If he has a trademark of france.com, it would seem that he would have an infringement case if someone else used his trademark. If France’s argument is that the domain name was appropriately transferred to them, it seems they should have gotten the domain and not used it – but once they began using it they were infringing on the U.S. trademark

            And in any argument that the U.S. trademark should be cancelled so they could use the domain, they would have to argue in the United States the reasons why the trademark was invalid — those would be the arguments they made in the French courts to get the domain – and those arguments about Geo rights in publicity are not valid when it comes to U.S. Trademark law.

            It appears that France has used arguments in French courts about French law to get around U.S. Trademark law without ever having to make those arguments in the U.S.

  8. thelegendaryjp says

    “The government asserted the exclusive right to use the term “France” commercially, contending that under 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.”

    Play stupid games, win stupid prizes.

  9. Erwin says

    I have been following this case with much interest.. this result seems to favour the many.. (the French/Government)
    As to wether I think it was ‘just’?

    I think not..

  10. David Michaels says

    The 4th Circuit decision revolves around whether the Republic of France was subject to suit for trademark infringement in the US. And the court said no, the Republic wasn’t subject to suit for trademark infringement over the use of France .com.

    The problem is that the France .com domain name was both hijacked and transferred by a French court, so this is now a property case.

    Who is the rightful owner of the France .com and whether the Republic of France was unjustly enriched by the transfer. Since the original owner of the domain name is a California corporation and it was registered in California, the matter should be determined under California law.

    The Kremen v. Cohen (sex .com) case provides some guidance. In that case, Kremen filed a lawsuit in a California Superior Court under Cal. Civ. Proc. Code § 1060 for a “declaration of his or her rights or duties with respect to another, or in respect to, in, over or upon property …”

    The scope of state law claims relating to domain names extends not only to the relationship between a domain name holder and a domain registrar, but also to the relationship between domain name holders and other third parties.
    Kremen v. Cohen, 325 F. 3d 1035 – Court of Appeals, 9th Circuit 2003

    I suspect that there might some California domain name attorneys who could help achieve justice for Frydman’s company France.com, Inc.

  11. J.R. says

    I’d be curious to hear what Berryhill, Zak Muscovitch or Gerald Levine would say about this ruling and what it means for Geo domains in general. If the Republic of France can claim a sovereign right, why not every nation? Or more worrying, why not every state in the USA or city?

    This precedent from a US Court for Appeals is disturbing. In fact, this is the type of case that should be appealed to the U.S. Supreme Court if there ever was a great test case for domain names, especially in light of the Booking.com case.

    Andrew can you contact the legal experts on this?

  12. John lewis says

    When we had only .com and .org and .net, a party in a similar case may have had an argument that they should own the .com or net or org.
    Now with hundreds and potentially an infinite number of dots, no party should have any exclusive right over the use of a word or name, unless of course it has acquired secondary meaning, or is distinctly unique (like IBM).
    The French government should suffice themselves with France.fr.
    Our UDRP panelists, and judges, should try to catch up with the rest of the world. I think that they are now dinosaurs.

    • Bul says

      Gosh you’re sending him down another rabbit hole. Since he is already in the French Courts in a pending case, he is subject to that judgement and that judgment comes out against him, it would be a mountain to climb. SCOTUS is not going to turn down ruling from a competent foreign court such as that of France. He should now start thinking saving some money not spending more

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