The “France.com” case made an impression. It may also constitute a turning point in the legal regime of this category of signs which, in diplomatic corridors, are now called “geographical names of national importance”.
The international instrument closest to the protection of country names is Article 6ter of the Paris Convention for the Protection of Industrial Property of March 20, 1883. The latter prohibits the filing, without prior authorization, of trademarks reproducing the flags, emblems, and heraldic signs of the signatory States. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of April 15, 1994, is silent on the issue. It should be noted that the first was modified for the last time in 1979. Vint Cerf and his colleagues had just managed to link three networks two years earlier, and in 1983, Jon Postel and his colleagues created the Domain Name System (DNS). As for the TRIPS, it shortly preceded the domain name rush of the mid-1990s. Suffice it to say that neither sovereign states nor trademark owners were informed and thus could not participate in the domain name rush.
The globalization movement shaped by the agreements of the World Trade Organization, on the one hand, and the bilateral and multilateral commercial exchange treaties, on the other hand, have exacerbated the interstate competition described several centuries ago by Ricardo in his theory of comparative advantage. We were not yet talking about “branding nation”. This complex concept of undeniable reality has become increasingly important since the beginning of the 2000s. An increasing number of states insist on exercising sovereign control over domain names of national importance.
Some States have never ceased to defend the name or names by which they are known under the ISO 3166 standard or customary law.
The most notable intervention is that of the Governmental Advisory Committee (GAC), an arm of the Internet Corporation for Assigned Names and Numbers (ICANN). As its name suggests, the GAC is a specific advisory committee that, as such, does not have voting rights on the ICANN Board of Directors. However, the latter must duly take into account the opinions of governments and public authorities. Moreover, although the promotion of competition in the registration of domain names constitutes one of the central values of ICANN, it is on the condition that the public interest is the beneficiary. One can legitimately support the idea that registering a domain name such as <countryname.tld> for private purposes goes against the public interest and, consequently, against the values of ICANN. Thus, on March 28, 2007, the GAC adopted principles relating to new generic top-level domains (new gTLDs), including Article 2.2, which states that ICANN should, in particular, avoid the registration of country names. In the same vein, Specification 5 of Section 4 of the new gTLD standard registry agreement prohibits the registration of country names in ASCII characters, in IDNs, and the six official languages of the United Nations without the prior consent of the government authorities of the State concerned. Of the 94 sovereign states that have specified their intentions concerning the reservation of <countryname.newgtldtld>, only ten have expressly waived their right (gac.icann.org), only 10%.
These issues will be discussed on November 21, 22, and 23, 2022, in a meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications of the World Intellectual Property Organization. The project draft agenda examines several discussions on protecting country names (ompi.int), including the clash between country names and domain names. Thus, the “Proposal of Brazil, United Arab Emirates, Georgia, Indonesia, Iceland, Jamaica, Liechtenstein, Malaysia, Mexico, Monaco, Peru, Senegal and Switzerland concerning the protection of country names of national importance in the DNS”:
“to protect the country names and geographical names of national significance against their delegation as top-level domain names in the DNS, except if the delegation application counts with the explicit support or non-objection of the relevant public authority concerned”. (SCT/41/6 REV.: (wipo.int)).
The wording invites to rethink the allocation of domain names identical to country names so as, on the one hand, to abolish private monopolies and cases of cybersquatting in order, on the other hand, to optimize their exploitation for the community benefit. This wording, however, deserves an update that would expand the scope of the proposal beyond the DNS to reach the alternative extensions created through blockchain technology. These new top- and second-level domains and non-fungible tokens (NFTs) that profusely reproduce heraldic symbols pose an additional threat to both intellectual property rights holders and sovereign states. Indeed, the creation and sale of domain names such as <countryname.eth> (.ETH for Ethereum, the issuer of the eponymous cryptocurrency) poses a problem. Countless brands and countries are already victims. History repeats itself, but this time, no one is unaware of the threat.
In this respect, the judicial attribution of the domain name <france.com> (cass., April 6, 2022, n° 17-28.116: courdecassation.fr) for the benefit of the economic interest grouping (EIG) Atout France is exemplary. An EIG is a legal person created by two or more natural or legal persons who work together to develop the activity carried out by its members. In this case, Atout France’s mission is to develop tourism in France. Its board of directors is made up of 44 seats allocated in particular to the President of the Association of Mayors of France, the Director of Communication of the Organizing Committee of the Paris 2024 Olympic and Paralympic Games, the representative of the Minister responsible for Culture, the representative of the Minister for Sports, the Managing Director of Southern Europe of the Accor group, the Managing Director of Air France, the President of Vinci Railways, the Deputy Director of Vinci Airports, the President of the National Union of Tourism and Outdoor Associations, the President of Travel Companies and the President of the Union of Trades and Industries of the Hotel Industry. It can be said that the domain name <france.com>, eponym of the sovereign name “France”, is now optimally exploited as a common good in the public interest. Finally, remember that sovereignty rhymes with inalienability and imprescriptibility.
