The Federal Appeals Court rules in favor of the French Republic in a trademark infringement claim by the former owner of France.com
A much-debated domain squatting case has finally been settled in favour of the French Republic after cross-border litigation that lasted for nearly six years.
The domain was finally given to its rightful owner with the US Fourth Circuit ruling in favour of the French Republic thereby evicting an illegal squatter who had been using domain France.com to promote his business for over a quarter-century.
The Court held that France is immune from US trademark infringement claims in the case brought by Jean-Noel Frydman, the former owner of France.com. Jean-Noel is a US citizen of French origin who had registered and was running France.com since 1994 to sell French travel services.
Circuit Judge Diana Gribbon Motz, joined by Judges Henry Floyd and Allison Jones Rushing, ruled that the French government did not engage in commercial activity that would negate its sovereign immunity when it won the rights to the domain name in a French court from France.com Inc.
Jean-Noël Frydman had registered a company called France.com Inc. in California and owned both US and EU trademarks protecting the name.
Frydman's trouble started when his company sued a Dutch company in French Court in Paris for infringing on the trademarks. The French government intervened by asserting that it had the sole right to use the name "France" commercially under French law.
The French Court had rendered a judgment in favor of the French government in 2015. The French Court had then ruled that the company's use of the domain name infringes on the rights of the French Republic to its name. The court ordered the transfer of "France.com" to France.
The Paris Court of Appeals in 2017 affirmed the lower court's decision.
Jean-Noël Frydman encountered another disappointment when the General Court of the European Union found in 2018 that "France.com" cannot be registered as a trademark as it is similar to a previous trademark registered in 2010 by France.
According to the Tribunal, "the signs at issue cover identical or similar services and exhibit a particularly high degree of phonetic and conceptual similarity," which causes a likelihood of confusion.
Not ready to give in without exhausting all available legal options, France.com Inc. subsequently sued the French Republic in a Virginia Federal Court for cybersquatting and trademark infringement.
The US District Court Judge Liam O'Grady in Alexandria rejected the French government's request to dismiss the case under the Foreign Sovereign Immunities Act in 2019.
The Fourth Circuit, on appeal, observed that the US Supreme Court had already deemed sovereign immunity a threshold question that should be addressed "as near to the outset of the case as is reasonably possible."
The Fourth Circuit gave the decisive ruling bringing the curtains down on the domain dispute case saying that France was immune from the claims because neither the commercially reasonable nor the expropriation exemptions apply in this instance.