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France.com: Caution and Patience

The media has reported what is now known as France.com. Just as many are those who echoed the arguments of one of the protagonists. However, the case has not yet been decided as it is much more complex than it seems. The decision must be concluded with caution.
The story of the France.com domain name began in 1994 with its registration by a Franco American. Since then, the website France.com has offered travel and tourism services mainly to the American public.
In 2015, the U.S. company France.com, Inc., holder of the eponymous domain name, sued the Dutch company Traveland Resorts before the Paris Court of First Instance to cancel French and European trademarks containing the mark ” France.com”.
The French government voluntary intervened in this dispute seeking the transfer of ownership of both the trademarks and the domain name France.com. Finally, France.com, Inc. and Traveland Resorts settled: France.com, Inc. bought Traveland Resorts’ trademarks, in return for the withdrawal of its complaint before the court. However, the French government adamantly maintained its position.
The case was brought before the Paris Court of Appeal. In a judgment rendered on 22 September 2017, the court ordered i) the transfer of the France.com domain name to the French government and ii) the cancellation of the “France.com” trademarks. The Paris Court of Appeal based its decision on the following reasoning: (1)
The name “France” constitutes for the French State an element of identity comparable to the patronymic name of a natural person; whereas this term designates the national territory in its economic, geographical, historical, political and cultural identity, which is intended in particular to promote all the goods and services covered by the deposits of the trademarks in question; whereas the suffix “.com” corresponding to an extension of Internet domain name is not likely to modify the perception of the sign.
In response, France.com, Inc. is suing the French government before the courts of the State of Virginia. In addition to the issue of territorial jurisdiction, the France.com, Inc.  argues that the French government has committed: (i) a cybersquatting act; (ii) an act of reverse domain name hijacking; (iii) an expropriation without financial compensation; (iv) trademark infringement and (v) acts of unfair competition. Each of these legal issues is complex. Some are more so than others. The case could even take an even more complicated turn if it were brought before the competent authorities for investment arbitration. In these circumstances, it is difficult to make any prediction regarding the outcome of the dispute.
The IP Twins lawyers team specializes in intellectual property and information technology law. IP Twins is an ICANN-accredited domain name registrar. We manage domain name portfolios and detect cybersquatting acts as well as counterfeits. Contact us.
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(1) A translation of the decision is available here.