France.com UDRP: French government won’t surrender domain

The former registrant of France.com has failed to get back the domain via the UDRP process at the WIPO.

The French government (French State) defended French.com successfully, years after taking control of it via a series of actions to defend its national identity and brand.

Here is the English translation of the UDRP decision at the WIPO that was issued in French:

France.com

ARBITRATION AND MEDIATION CENTER – DECISION OF THE ADMINISTRATIVE COMMISSION

France.com, Inc. against the French State, represented by the Ministry of Foreign Affairs and International Development (MAEDI), today designated Ministry of Europe and Foreign Affairs

Litigation No. D2022-1780

The parts

The Claimant is France.com, Inc., United States of America (hereinafter referred to as “the United States”), represented by André R. Bertrand, France.

The Respondent is the French State, represented by the Ministry of Foreign Affairs and International Development (MAEDI), today referred to as the Ministry for Europe and Foreign Affairs,1 represented by SAS De Gaulle Fleurance & Associés, France.

Domain name and registration unit

The disputed domain name france.com is registered with OVH (hereinafter referred to as the “Registration Unit”).

Reminder of the procedure

A Complaint was filed in English with the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter referred to as the “Centre”) dated May 11, 2022. The Complaint was brought against the “ French Republic” and the “Ministry for Europe and International Government (MAEDI)”. On May 18, 2022, the Center sent a request to the Registration Unit for the purpose of verifying the elements of the dispute, as communicated by the Applicant. On May 19, 2022, the Registrar transmitted its verification to the Center revealing the identity of the holder of the disputed domain name (“and Foreign Affairs, Minister for Europe”) and his contact details, different from the name of the Respondent and contact details designated in the complaint. On May 23, 2022, the Center sent an email to the Claimant with the data relating to the holder of the disputed domain name as communicated by the Registrar and invited the Claimant to submit an amended complaint. In addition, the Center sent an email regarding the language of the proceedings informing the Parties that the Registrar had indicated that the language of the disputed domain name registration contract was French. The Applicant requested that the language of the proceedings be English, the

Respondent

1 The Administrative Commission finds that the Registration Unit has formally identified the holder of the disputed domain name as being: “and Foreign Affairs, Minister for Europe.”

indicated that he would communicate in French. On May 27, 2022, the Center received an email from the Claimant concerning the information relating to the holder of the disputed domain name received verbatim from the Registrar. The Applicant filed an amended complaint in English on May 27, 2022.

The Center has verified that the Complaint and the Amended Complaint comply with the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the “Guidelines”), the Policy Application Rules (hereinafter referred to as the “Implementing Rules”), and to the WIPO Supplementary Rules (hereinafter referred to as the “Supplementary Rules”) for the application of the aforementioned Guidelines.

In accordance with paragraphs 2 and 4 of the Rules of Application, on June 3, 2022, a notification of the complaint, which constitutes the initiation of this administrative proceeding, was sent to the Respondent in English and in French. In accordance with paragraph 5 of the Rules of Application, the last deadline for sending a response was June 23, 2022. Following the Respondent’s request for an extension of the time limit set for responding to the Applicant’s complaint, and taking into account the reasons relied upon by the Respondent and the Applicant’s non-objection, the Center, pursuant to Rule 5(e) of the Rules, granted an extension of time to respond to the Applicant’s complaint until July 11, 2022. The Respondent has sends its response on July 8, 2022. On July 11, 2022, the Center received an additional electronic communication from the Claimant and the Respondent. A contact mentioned in the complaint as a contact related to the Respondent also sent emails on May 24, 2022.

On August 22, 2022, the Center appointed Christophe Caron, Isabelle Leroux, and Tobias Malte Müller as experts in this dispute. The Administrative Commission notes that it was constituted in accordance with the Guiding Principles and the Rules of Application. Each member of the Administrative Commission has addressed to the Center a declaration of acceptance and a declaration of impartiality and independence, in accordance with paragraph 7 of the Rules of Application.

Facts

The Claimant is a company with its registered office in the United States and registered on October 8, 1999. It appears from the uncontested documents provided by the Claimant that it is notably

holder of the American brand FRANCE.COM registered on April 15, 2014 under number 4514330 for services in classes 35, 39 and 41.

Furthermore, it follows from the uncontested allegations of the Claimant that the disputed domain name was registered by Mr. Jean-Noel Frydman on February 10, 1994, who then transferred it (on June 18, 1999) to the Claimant. The Claimant used the disputed domain name to promote tourism in France from the United States. The disputed domain name was transferred to the Respondent on January 11, 2018. The Respondent obtained this transfer of the disputed domain name for its benefit before the French courts, under the terms of the decisions set out below and which are all final today. :

Firstly, the Applicant had brought proceedings before the Tribunal de Grande Instance of Paris against a third-party company claiming the French trademarks FRANCE.COM held by the latter. Having learned of the existence of this procedure, the Respondent voluntarily intervened (together with another entity) to have the infringement of the rights of the French State over the name of its territory noted and in particular to obtain the transfer for its benefit of the name of disputed domain held by the Claimant. In a judgment dated November 27, 2015, the Paris Tribunal de Grande Instance ordered the Claimant, among other things, to transfer this domain name to the Respondent. This decision, and therefore the transfer of the disputed domain name to the Respondent, was confirmed by the Paris Court of Appeal in a judgment rendered on September 22, 2017. The Court of Cassation having completely dismissed the Applicant’s appeal against this judgment of the Paris Court of Appeal, the latter has become final, as has the injunction issued to the Claimant to transfer the disputed domain name to the Respondent.

Secondly, while the French proceedings referred to in the previous paragraph were still ongoing, the Applicant brought in April 2018 a legal action against the Respondent and others before the District Court for the Eastern District of Virginia, in particular on the basis alleged acts of unlawful recapture of the disputed domain name (“Reverse Domain Name Hijacking”). This federal court having refused to grant the exception of jurisdictional immunity of foreign States raised by the Respondent, the latter filed an appeal before the Court of Appeals of the Fourth Circuit. The Court of Appeals of the Fourth Circuit found that the jurisdictional immunity objection raised by the Respondent was applicable to the case, and therefore sent the case back to the federal court for closure. The United States Supreme Court declined to rule on this case. The procedure is therefore also complete in the United States.

The website to which the disputed domain name redirects presents, on the day of the introduction of this complaint, information on France, by the French government.

Arguments of the parties

Applicant

The Applicant submits that:

the first registrar was American and that the French State, without informing the Claimant, transferred the disputed domain name after signing a contract with this same American registrar. In light of these facts, the Applicant requests that the language of the proceedings be English;

the disputed domain name is identical either to its American trademark FRANCE.COM registered on April 15, 2014, or to the American trade name of the Claimant;

the Respondent had no legitimate interest in the disputed domain name, (i) in connection with an offer of goods or services in good faith; (ii) that it would never have been commonly known by the disputed domain name, and does not hold any trademark or other intellectual property rights in the disputed domain name;

the Respondent has never demonstrated that the Claimant registered the disputed domain name in 1994 in bad faith, nor that this domain name has been used since 1999 in bad faith. Nevertheless, the Respondent would have found a “flaw” in the legal system, to obtain the disputed domain name, that is to say the voluntary intervention in the French legal procedure described above;

due to the exceptional circumstances described above in point (1), any legal proceedings against the decision of the Administrative Commission must be brought before the courts of Florida in the United States;

in the coming weeks, the Respondent will file a complaint against the French State before the European Court of Human Rights in Strasbourg (ECHR).

Respondent

The Respondent responds that:

he will communicate in French;

he principally asks

l to terminate the proceedings on the basis of paragraph 18(a) of the Rules of Application of the Guidelines. The Respondent believes that the existence of prior legal proceedings in France and the United States which have definitively settled the question of the ownership of the disputed domain name, should lead the Administrative Commission to close the present proceedings in

the exercise of its discretionary power. In the alternative, the Respondent requests that the remedial measures requested by the Applicant be dismissed;

the Applicant has not established, in his complaint, the fulfillment of the three cumulative conditions set out in paragraphs 4(a)(i), (ii) and (iii) of the Guidelines. In particular, he requests that the rights which the Applicant claims to have within the meaning of paragraph 4(a)(i) of the Guidelines be assessed with due caution;

the Respondent may oppose any attempt to appropriate his name since this name, under which he has been known and identified by his nationals, and by the entire international community for centuries, naturally falls within the scope of the intangible public property, and that the Respondent’s right to his name constitutes a constitutionally protected extra-patrimonial right which, as part of his personality, is inalienable, imprescriptible and unseizable. It is precisely on the basis of this same right to the name “France” that the French courts ordered the transfer of the disputed domain name by the Claimant to the Respondent;

the disputed domain name was not transferred in bad faith to the Respondent since this transfer results from decisions – which have now become final – rendered by the French courts, France being a State governed by the rule of law and the French magistrates called upon to rule on this dispute having been neither “biased” nor “corrupt”, as the Applicant does not hesitate to assert. Furthermore, the Claimant does not even attempt to demonstrate how the disputed domain name would today be used in bad faith by the Respondent;

the Administrative Commission is invited to expressly formulate in its decision the fact that the present administrative procedure constitutes, on the part of the Applicant, an abuse of process, since it is the Applicant who showed bad faith in deciding to introduce the present proceedings knowing full well that the question of ownership of the disputed domain name had already been definitively settled by the French courts, and between the same parties;

the Administrative Commission must expressly mention in its decision that the Applicant must, in the event of an appeal against the decision of the Administrative Commission, submit to the jurisdiction of a court located in France.

Additional unsolicited submissions from the Applicant

The Applicant points out in his Unsolicited Additional Observations that it is up to the Administrative Commission to determine the admissibility on the merits of the complaint in the light of the principle limine litis solely on the basis of the Guiding Principles. Moreover, he deepens his previous argument.

Respondent’s Additional Unsolicited Submissions

By its Unsolicited Additional Observations, the Respondent requests that the Administrative Commission not take into account the Applicant’s additional observations insofar as these have not been requested by the Administrative Commission and that none of the arguments developed by the Applicant could not have been anticipated by the Applicant at the stage of his complaint.

Discussion and conclusions

Paragraph 4(a) of the Guidelines lists three conditions that the Complainant must demonstrate to have met in order to obtain a decision that the disputed domain name registered by the Respondent should be deregistered or transferred to the Complainant:

the disputed domain name is identical to, or confusingly similar to, a

product or service mark for which the Applicant has rights; and

the Respondent has no right or legitimate interest in the disputed domain name; and

the disputed domain name has been registered and is being used in bad faith.

On the language of the proceedings

First of all, the Administrative Commission rejects the Applicant’s request to change the language of the proceedings to English and considers French as the language of the proceedings.

In accordance with paragraph 11 of the Application Rules, unless otherwise agreed between the parties, or unless otherwise stipulated in the domain name registration contract, the language of the proceedings is the language of the registration contract on the date of the complaint. . According to

the information that the Administrative Commission has received from the registration unit, the language of the contract for the registration of the disputed domain name in the present case is French.

Nevertheless, paragraph 11 of the Rules of Application allows the complaint to be submitted in another language and the language of the proceedings to be changed, if the Administrative Commission is of the opinion that the circumstances of the case justify it. The Administrative Commission holds that this is not the case in this case because the Applicant has not presented a reasoned or justified request, in this sense, by material elements. Indeed, the Claimant’s request is essentially based on the fact that the disputed domain name was initially registered with an American company, before being transferred, in bad faith and without notifying the Claimant, in 2018 to the current registration unit, namely the French company OVH.

The Administrative Commission is of the opinion that this argument is not relevant, because on the day of the filing of the complaint, the registration unit was the French company OVH and the Applicant could not have been unaware of it, as confirmed by the information contained in his complaint. The nationality of the initial registration unit therefore has no impact on the language of the procedure because, pursuant to paragraph 11 of the Rules of Application, the relevant contract is indeed the registration contract on the day of the filing of the the complaint, therefore the contract with OVH.

In any event, the Administrative Commission considers that all the circumstances summarized below demonstrate that the Applicant knows the French language:

the exchanges in French of his counsel with the Center (in particular the email of May 25, 2022 concerning the language of the proceedings and the competent court);

the fact that the Applicant had dedicated his website to tourism in France and;

the fact that he initiated proceedings before the French courts and continued them for three instances.

Therefore, and considering the Respondent’s challenge to the choice of English as the language of the proceedings, the Administrative Commission considers that the use of French is not detrimental to the rights of the Applicant, and must be the language of this procedure.

On the identity of the Respondent

In addition, the identity of the Respondent must be correctly determined since the file presented to the Administrative Commission contains certain inconsistencies in this regard.

The Administrative Commission first notes that the Registration Unit identified the Respondent as “Europe and Foreign Affairs, Minister of”. However, it is obvious that such a name is erroneous since a

holder as registered as holder of the disputed domain name cannot – correctly – exist.

Secondly, the Administrative Commission notes that the Applicant did not indicate the identity of the Respondent in the amended complaint in a coherent manner. Indeed, in its amended complaint, it refers to the Respondent as the “Ministry of Europe and Foreign Affairs (French Ministry of Foreign Affairs – The French State”) while on the cover page it identifies it as follows: “ République Française/French State Ministry of Foreign Affairs and International Government (MAEDI).” In any event, neither of the two identities mentioned in the amended complaint is that of the holder of the disputed domain name as indicated by the Unit of registration, namely: “Europe and Foreign Affairs, Minister of.”

Finally, Counsel for the Respondent indicates in his first email to the Center that the Respondent in these proceedings is “the French State, represented by the Ministry of Foreign Affairs and International Development (MAEDI), today designated Ministry of Europe and Foreign Affairs”.

In light of the foregoing, the Administrative Commission designates the identity of the Respondent as being “the French State, represented by the Ministry of Foreign Affairs and International Development (MAEDI), today referred to as the Ministry for Europe and Foreign Affairs”.

On the additional unsolicited observations of the parties

The Applicant and the Respondent, on July 11, 2022, sent to the Center additional observations not requested by the Administrative Commission.

Pursuant to paragraphs 10 and 12 of the Rules of Application, the eligibility of such additional unsolicited deposits is determined at the sole discretion of the Administrative Commission. Consequently, the Administrative Commission decides whether it accepts to take into consideration such additional unsolicited observations.

cited in the elaboration of its decision.

In this case, the Administrative Commission has taken note of the additional observations and notes that each of the Parties has submitted such observations. In the exercise of its discretionary power, the Administrative Commission decides not to disregard the unsolicited additional observations of the Applicant and the Respondent and to admit them into the present proceedings.

On the scope of the UDRP

The French courts have definitively ruled on the question of ownership of the disputed domain name. In this respect, the Administrative Commission recalls that the disputed domain name has been, since 2015, at the heart of several legal proceedings between, in France and the United States, the same parties as in the present administrative proceedings, and concerning the same domain name, and which are all now definitively judged:

In particular, the Claimant had sued a third-party company before the Tribunal de grande instance of Paris to claim French trademarks FRANCE.COM held by the latter. Having learned of the existence of this procedure, the Respondent voluntarily intervened (together with another entity) to have the infringement of the rights of the French State over the name of its territory noted and in particular to obtain the transfer for its benefit of the name of disputed domain held by the Claimant. By judgment dated November 27, 2015, the Tribunal de grande instance of Paris ordered the Claimant, among other things, to transfer this domain name to the Respondent. This decision, and therefore the transfer of the disputed domain name to the Respondent, was indeed confirmed by the Paris Court of Appeal in a judgment rendered on September 22, 2017. The Court of Cassation dismissed the Claimant’s appeal against this judgment of the Paris Court of Appeal, the latter has become final, as has the injunction issued to the Claimant to transfer the disputed domain name to the Respondent.

While the French proceedings referred to in the previous paragraph were still ongoing, the Applicant brought, in April 2018, a legal action against the Respondent and others before the District Court for the Eastern District of Virginia, in particular on the basis alleged acts of unlawful recapture of the disputed domain name (“Reverse Domain Name Hijacking”). This federal court having refused to grant the exception of jurisdictional immunity of foreign States raised by the Respondent, the latter filed an appeal before the Court of Appeals of the Fourth Circuit. The Court of Appeals of the Fourth Circuit found that the jurisdictional immunity objection raised by the Respondent was applicable to the case, and therefore sent the case back to the federal court for closure. The United States Supreme Court declined to rule on this case. Consequently, in view of the documents submitted by the Parties and not disputed, the decision rendered by the Court of Appeals of the Fourth Circuit is now final, and the proceedings are therefore also terminated in the United States.

In addition, the Administrative Commission notes that the dispute presented to it does not fall within the strict scope of the UDRP Principles either.

According to Section 4.14.6 of the Summary of Administrative Panel Opinions on Certain UDRP Matters (“WIPO Summary, Version 3.0”), the Administrative Panel may dismiss a claim for lack of jurisdiction in circumstances where the subject of the dispute goes beyond the scope of jurisdiction limited to “cybersquatting”, in particular when it comes to complex commercial or contractual disputes, and such a case should be more adequately dealt with by a competent court (see in this sense M31 Management Limited v. Nathan Montone, WIPO Litigation No. D2021-2297; Auconet GmbH v. Frank Winter, WIPO Litigation No. D2020-2651). The Administrative Commission considers that this dispute is not a case of “cybersquatting”, also in view of the history of the decisions of the various jurisdictions.

Accordingly, this dispute is beyond the limited scope of the UDRP.

The Administrative Commission therefore decides that the present procedure must be dismissed, without a decision on the merits being taken.

On the abusive nature of the complaint

Finally, the Respondent asks the Administrative Commission to expressly state in its decision that the complaint constitutes an abuse of administrative procedure.

Abusive procedure is provided for in paragraph 15(e) of the Rules of Application according to which “If, in view of the elements submitted to it, the commission finds that the complaint has been lodged in bad faith, for example in a attempt to illegally recapture a domain name (“Reverse Domain Name Hijacking”), or that it was done primarily for the purpose of harassing the domain name holder, the commission declares in its decision that the complaint was introduced in bad faith and constitutes an abuse of administrative procedure”.

The following circumstances listed in section 4.16 of the WIPO Summary, version 3.0, may characterize an abuse of administrative process: “(i) facts demonstrating that the complainant knew that he could not win his case on any of the three required elements; (…) (v) providing intentionally incomplete physical evidence – often clarified by the defendant, (…) (viii) basing a claim on a weak allegation without any supporting evidence.

In addition, when the applicant is represented by counsel, certain administrative commissions have already held that the applicant should be bound by a more demanding obligation, taking into account the commitments made in paragraphs 3(b)(xiii) and (xiv) of the Rules. UDRP. It is recalled that pursuant to paragraph 3(b)(xiii) of the Rules, the complainant must certify that “the information contained in the complaint is to the best of his knowledge complete and accurate, that this complaint is not presented for inappropriate, such as harassment, and that the assertions contained in the Complaint are warranted under the terms of these Rules and applicable law as it now exists or as it might be extended by reasonable and good faith argument.”

In this case, the Administrative Commission does not overlook the fact that certain assertions made by the Applicant in his communications seem inappropriate since the Administrative Commission found no indication in the file to support them, for example when the Applicant accuses the Respondent of “ fraud” (additional observations of June 23, 2022) and conspiracy between the French State and Web.com (amended complaint). The Administrative Commission further notes that no evidence has been adduced to substantiate these allegations.

Nevertheless, the Administrative Commission holds that, even if they seem excessive, these statements do not exceed the freedom of expression of the Applicant and his counsel and that this is therefore not an abuse of process in this case.

Finally, the Administrative Commission notes that according to section 4.16 of the WIPO Summary, version 3.0, the absence of a chance of success is not sufficient to conclude that there has been an abuse of administrative procedure.

In light of the foregoing, the Administrative Commission decides that the complaint does not constitute an abuse of administrative procedure.

Decision

For the reasons set out above, the Administrative Commission decides to reject the Applicant’s complaint, without a decision on the merits being taken.

/Tobias Malte Müller/
Tobias Malte Muller

President of the Administrative Commission

/Christophe Caron/ Christophe Caron Expert

/Isabelle Leroux/ Isabelle Leroux Expert

September 5, 2022

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