Ruling No. 238 F-B
Dismissal and forfeiture
Public hearing of 6 April 2022
Dismissal and forfeiture
Ms DARBOIS, elder judge acting as President
Ruling No. 238 F-B
Appeal No. 17-28.116
ON BEHALF OF THE FRENCH PEOPLE
RULING OF THE COMMERCIAL, FINANCIAL AND ECONOMIC CHAMBER OF THE COUR DE CASSATION (COURT OF CASSATION) OF 6 APRIL 2022
France.com Inc., a company incorporated under US law, with registered office at [Address 1] (USA), lodged appeal No. 17-28.116 against rulings Nos. RG 15/24810 of 24 November 2016 and RG 15/24810 of 22 September 2017 of the cour d'appel (Court of Appeal, Division 5, Chamber 2) of Paris, in the dispute between the appellant and:
(1) the Economic Interest Grouping (EIG) Atout France, a French tourist development agency, with registered office at [Address 3],
(2) the French State, represented by the Minister for Foreign Affairs and International Development, with office at [Address 2], respondents before the Cour de cassation (Court of cassation).
The appellant bases their appeal on the six grounds of quashing attached to this ruling.
The case file has been sent to the Prosecutor-General.
On the report of Ms Bessaud, judge referee, the comments of SCP Gatineau, Fattaccini and
Rebeyrol, lawyers of France.com Inc., a company incorporated under US law, of SCP Thomas-Raquin, Le Guerer, Bouniol-Brochier, lawyers of GIE Atout France, and of the French State, after debates in the public hearing of 15 February 2022, in the presence of Ms Darbois, elder judge acting as president, Ms Bessaud, reporting judge referee, Ms Champalaune, judge, and Ms Labat, Chamber Registrar,
the Commercial, Financial and Economic Chamber of the Cour de cassation (Court of cassation), comprised of the above-mentioned President and judges, after deliberation thereof in accordance with the law, has delivered this ruling.
Facts and procedure
- According to the ruling under appeal (Paris, 22 September 2017), the company, incorporated under US law, France.com Inc. (the company France.com) is the holder of the domain name "france.com", registered in the United States on 10 February 1994.
- Traveland Resorts, a company incorporated under Netherlands law, filed the following five French trademarks on 2 July 2009 to designate various goods and services in Classes 16, 25, 35, 36, 38, 39, 41, 42 and 43:
the "france.com" trademark No. 3661596,
- the coloured semi-figurative trademarks "france.com" Nos. 3661598 and 3661603,
- semi-figurative trademarks "france.com" Nos. 3661600 and 3661602.
- The company also held four Community trademark registrations (EU trademarks) Nos. 08791857, 08791873, 08791899 and 08791923 of 22 June 2010, claiming the priority of the corresponding French registrations, to designate various goods and services in the same classes.
4. By act of 19 May 2014, the company France.com summoned it to obtain, on the basis of a fraudulent application, the transfer of the trademarks for its benefit, together with compensation for damages.
5. On 14 April 2015, the French State intervened as a third party in the proceedings seeking recognition of the infringement of its rights to the name of its territory by the trademarks and the domain name "france.com" and to obtain their transfer for its benefit or, incidentally for the prohibition of licence of the domain name. The economic interest grouping Atout France also intervened with a claim for unfair competition.
- By transaction, the trademarks were transferred to France.com in autumn 2014 and registered on 18 May 2015 with the Office for Harmonization in the Internal Market (OHIM), as regards the Community trademarks, and on 3 July 2015 in the national register of trademarks, as regards the French trademarks. Then, on 19 June 2015, France.com withdrew from the proceedings, which was accepted on the same date by Traveland Resorts.
- On 3 September 2015, the French State filed additional claims for annulment of the five registrations of the French trademarks transferred to France.com and for an order whereby France.com, voluntarily, was to relinquish the four Community trademark registrations before the OHIM.
- France.com's withdrawal from proceedings against Traveland Resorts was established by order of the pre-trial judge of 2 October 2015.
Review of the pleas
On the first and second parts of the second plea
Statement of plea
- France.com objects to the ruling that annuls the French trademarks "France.com" registered on 2 July 2009 for all the goods and services covered by the application:
"(1) that it is for the party claiming to have been unable to act during the statutory term to allege and prove the circumstances that prevented it from initiating an action; that the applicant in an action for trademark annulment brought more than five years after registration of the trademark is therefore responsible for claiming and proving that they were not aware of the use of the trademark during said term; the company France.com, the defendant, who invoked the foreclosure for filing the action, failing to demonstrate or even allege that the French State, the applicant for the declaration of invalidity , had knowledge of the use of the signs at issue before July 2015, the cour d’appel (Court of Appeal) reversed the burden of evidence, thus infringing Article 1315, now Article 1353, of the Civil Code;
(2) that the lower court must seek the date on which the applicant for the declaration of invalidity of the trademark became aware of the use of the disputed sign; that by merely stating that France.com did not demonstrate or even allege that the French State became aware of the use of the signs at issue before July 2015, after having found that the French State had acted to obtain the transfer of said signs in its favour as early as 14 April 2015, and without explaining more specifically the date on which the French State became aware of the use of the disputed signs, the cour d’appel (Court of Appeal) deprived its decision of any legal basis under Article L. 714-3(3) of the of Intellectual Property Code."
- A party which opposes the extinction of rights due to acquiescence must establish the honest and continuous use thereof for more than five years, which cannot be inferred from its registration per se, as well as the knowledge of the owner of the prior right, which is in opposition thereto.
- In light of the submissions of France.com, which, without even alleging public use of the disputed trademarks, merely asserted the extinction of rights due to acquiescenceof the French State's action for invalidity of the French trademarks, on the grounds that even if the State could claim a prior right to the term "France", it could not assert the benefit of that right more than five years after registration of the "France.com" trademarks, the cour d’appel (Court of Appeal) held, without reversing the burden of evidence and without being required to explain further, that it had not been evidenced that the French State had been aware of Traveland Resorts' use of the disputed trademarks prior to their transfer.
- The plea is therefore unfounded.
On the third, fourth and fifth parts of the second plea
- The company France.com objects:
"(3) that Directive 2008/95/EC of 22 October 2008 provides that conflicts between a trademark and prior rights must be listed in full; that since no provision of French law provides for a prior right of States to the name of their country, Article L. 711-4 of the Intellectual Property Code, as interpreted in accordance with the Directive, the French State, in the absence of an express textual provision, is not entitled to rely on a prior right relating to the name "France"; that in order to find otherwise, based on the fact that the list referred to in Article L. 711-4 of the Intellectual Property Code is not exhaustive, the cour d’appel (Court of Appeal) infringed such text;
(4) that the "right to a name" constitutes a prior right only if it is expressly protected by national legislation; that although French legislation explicitly protects the "name or company name" or the "trade name or sign" of companies, the "surname" of natural persons, or the "name" of local and regional authorities, no specific provision provides for a prior right of States to the name of their country; that by ruling that the designation "France" should be considered, for the French State, the same as the surname of a natural person and thus have the same protection, the cour d’appel (Court of Appeal) infringed Article L. 711-4 of the Intellectual Property Code, as interpreted in accordance with Directive No. 2008/95/EC of 22 October 2008;
(5) that failure to reply to submissions constitutes a failure to state reasons; that by ruling, in order to cancel the trademarks of the company France.com, that they created a risk of confusion in the minds of the public that would identify the goods and services designated as originating from the French State or from one of its official services, without responding to the plaintiff's plea, which explained, with supporting documents, that the extension ".com" was at the time reserved for commercial entities, with only the extensions ".gouv.fr" being likely to be associated with a service of the French State, thus excluding any risk of confusion, the cour d’appel (Court of Appeal) infringed Article 455 of the Civil Procedure Code."
- After having specifically held that the list of the prior rights referred to in Article L. 711-4 of the Intellectual Property Code, in its wording prior to Law No. 2014-344 of 17 March 2014, is not exhaustive and that the name "France" constitutes an element of identity for the French State, in that said term designates the national territory vis-à-vis its economic, geographical, historic, political and cultural identity, for which it is entitled to claim a prior right as defined in this article, the ruling accepts that the suffix ".com", corresponding to an Internet domain name extension, is not sufficient as to alter the perception of the sign, such that the public shall identify the goods and services designated in the trademark registration as originating from the French State or at least from an official service benefiting from the endorsement thereof. It results that there is a risk of confusion, which, for complex trademarks, is reinforced by the stylised representation of the geographical boundaries of France. In this state, the cour d'appel (Court of Appeal), which, by dismissal thereof, had implicitly responded to the fifth part of the plea, rightly upheld the infringement of the prior right of the French State.
- The request for preliminary ruling referred by France.com concerning the interpretation of Directive 2008/95/EC of 22 October 2008, to approximate the laws of the Member States relating to trademarks with regard to whether or not prior rights are exhaustive, relates to an unambiguous provision of Union law, since that text provides that a Member State may prohibit the registration or use of a trademark by virtue of a prior right and, "in particular: i) a right to a name, ii) a right to an image, iii) a copyright, iv) an industrial property right." It is, therefore, an unambiguous act that does not require interpretation by the Court of Justice of the European Union. Furthermore, the question of whether a State may oppose, on the basis of a prior right, the name of the country in the absence of any express national provision, when the right to a name or the right to personality are referred to in Article L. 711-4 of the Intellectual Property Code, is a matter solely for the interpretation of domestic law.
- The plea is therefore unfounded.
On the first part of the third plea
Statement of plea
- The company France.com objects to the ruling for confirming the judgment ordering it to transfer the domain name "france.com" to the French State, subject to penalty, whereas "the judge is obliged to specify the basis of the decision adopted; that, by limiting itself, so as to order the transfer of the domain name "france.com" to the French State, to stating on its own grounds that said domain name infringed the name "France", which constituted an element of identity for the French State, and on adopted grounds that said domain name infringed the State's rights to its name, identity and sovereignty, without further specifying which text or principle it used as a basis to uphold such a right and order the transfer of the property of others to the State, the cour d’appel (Court of Appeal), which did not specify the basis of the decision adopted, infringed Article 12 of the Civil Procedure Code."
- Having held, on its own and adopted grounds, that the domain name "france.com" used by the company France.com infringed the State's rights to its name, identity and sovereignty and undermined the name "France", which constitutes an element of its identity, the cour d’appel (Court of Appeal) ruled on the basis of Article 9 of the Civil Code, as asserted by the French State.
- The plea is therefore unfounded.
On the fifth, sixth, seventh and eighth parts of the third plea
- The company France.com objects to the ruling
"(5) thatevery person has the right to respect for their property and may be deprived thereof only under the conditions provided for by the law; that no text or principle entitles a judge, on the basis of the State's right to the name of the country, to order the compelled transfer to the State of a domain name duly registered by a third party; by ordering such a transfer under conditions not provided for by law, the cour d’appel (Court of Appeal) infringed Article 1 of Protocol No. 1 to the European Convention on Human Rights;
(6) thatall persons have the right to respect for their property and may be deprived thereof only for reasons of public utility; that, by ruling that it was of irrelevance that the French State did not require the domain name "france.com", and, therefore, by ordering the compelled transfer of a property to the State without proven public utility, the cour d’appel (Court of Appeal) infringed Articles 544 and 545 of the Civil Code, Article 1 of Protocol No. 1 to the European Convention on Human Rights and Article 17 of the Declaration of the Rights of Man and of the Citizen;
(7) that all persons have the right to respect for their property and may be deprived thereof only in exchange for fair and prior compensation; that by ordering the transfer of the domain name "france.com" to the French State, which deprived the company France.com of its work tool, without ordering the State to pay compensation, the cour d’appel (Court of Appeal) infringed Articles 544 and 545 of the Civil Code, Article 1 of Protocol No. 1 to the
European Convention on Human Rights and Article 17 of the Declaration of the Rights of Man and of the Citizen;
(8) that the judge may not rule on irrelevant grounds; that, by the grounds adopted, the cour d’appel (Court of Appeal) has ruled against the possibility of creating e-mail addresses associated with the domain name, which was promoted by the agent responsible for the sale of the website "www.france.com"; that by ruling on such irrelevant grounds to justify the transfer of the domain name of the company France.com to the French State, failing to provide a sufficient legal basis for such a transfer, the cour d’appel (Court of Appeal) infringed Article 455 of the Civil Procedure Code."
The request for preliminary ruling
- Insofar as it relates solely to the interpretation of Article 17 of the Charter of Fundamental Rights of the European Union in view of the Court of Appeal's decision to order the transfer of a domain name to a third party, the request for preliminary ruling made by France.com does not concern an intellectual property right or any other right identified by France.com that would fall within the scope of EU law, but rather that of a national regulation. Therefore, it does not fall within the scope of Article 267 of the Treaty on the Functioning of the European Union and the Court of Justice of the European Union would thus clearly not hold jurisdiction to respond thereto.
- Firstly, the guarantees of Article 1 of Protocol No. 1 to the European Convention on Human Rights (the Convention) apply only in the event of interference by the State with an individual's right to respect for their property, which implies the existence of a "property" within the autonomous meaning of the Convention.
- If the domain name holder can claim a "proprietary interest" eligible for protection by the Convention (Paeffgen GmbH v. Germany (Dec.), Nos. 25379/04, 21688/05, 21722/05 and 21770/05, 18 September 2007), it is on condition that the prerogatives of which it intends to assert in this regard are sufficiently recognised and protected by applicable national law (Anheuser-Busch Inc. v. Portugal [GC], No. 73049/01, §§ 66-78, 11 January 2007), the interpretation and application to be given to this right not being the subject of dispute ([S] v. Slovakia [GC], § 50, No. 44912/98, 28 September 2004).
- The use of a domain name may be assigned or protected under national law provided that it does not infringe the rights of third parties.
- It is apparent from the evidence and the procedure that France.com ceased to operate its website on tourism in France, which was accessible at the address "www.france.com", before selling the domain name "‘france.com". On the grounds adopted, the ruling notes that the possibility of creating e-mail addresses associated with this domain name gave its holder privileged and monopolistic access to the detriment of other operators, was used as a commercial argument by the agent responsible for the sale of the disputed site, who promoted the apparent trustworthiness and credibility of the address as being able to be attributed to a service of the French State or to an authorised third party, and then holds that the domain name infringes on the French State's right to its name.
- In view of such circumstances, which emphasize the unlawful nature of the sale of the domain name "france.com", the exploitation of which had ceased, France.com cannot claim protected property as defined in Article 1 of Protocol No. 1.
- Secondly, apart from any preliminary questions of constitutionality, and as the registration of a domain name does not confer on its holder a right of ownership, as defined in Articles 544 and 545 of the Civil Code, France.com cannot claim any infringement of such right.
- The plea is therefore unfounded.
ON THESE GROUNDS, the Court:
STATES that the appeal is dismissed insofar as it is filed against the order handed down for the parties by the pre-trial judge of the cour d'appel (Court of Appeal) of Paris dated 24 November 2016;
DISMISSES the appeal;
Orders the company France.com Inc. to pay the costs;
Pursuant to Article 700 of the Civil Procedure Code, dismisses the claim filed by France.com Inc. and orders it to pay the economic interest grouping Atout France the amount of EUR. 3,000;
Thus decided by the Commercial, Financial and Economic Chamber of the Cour de cassation (Court of cassation), and pronounced by the President at a public hearing on the sixth day of the month of April of the year two thousand and twenty-two.
President : Ms Darbois, elder judge acting as President
Reporting Judge : Ms Bessaud
Lawyer(s) : SCP Gatineau, Fattaccini and Rebeyrol - SCP Thomas-Raquin, Le Guerer, Bouniol-Brochier
- Translated rulings