The WIPO case D2024-0424[1] involved France, represented by Mission d’Appui au Patrimoine Immatériel de l’État (or “APIE”, which can be translated as “State Intangible Assets Support Mission”, affiliated with the Ministry of Economics and Finance), against a cybersquatter who had appropriated the domain name <policenationale.net>. The suspicious configuration of the MX server and SPF raised serious concerns.
The trademark: “POLICE NATIONALE”
In the context of a UDRP procedure (Uniform Domain Name Dispute Resolution Policy), the complainant must demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which they have rights. The French State astutely registered the trademark “POLICE NATIONALE”[2]. In this case, the complete incorporation of the trademark into the domain name was sufficient to establish the identical nature of the domain name.
A strong presumption of phishing
The WIPO decision in D2024-0424 highlighted that the defendant had configured the domain name <policenationale.net> in a highly suspicious manner, with the MX server and SPF activated. An MX (Mail Exchange) record is a type of DNS resource used to specify the mail servers responsible for receiving emails. SPF (Sender Policy Framework) is an email validation system designed to detect and prevent email address spoofing. Given these circumstances, the commission reasonably concluded:
“It is accepted that configuring an MX server on a domain name poses the risk of creating an email address using the domain name for fraudulent purposes by the domain holder, especially when the domain name is anonymously registered, particularly for phishing data and identifying internet users by sending seemingly official emails. This presumption of bad faith is reinforced by the SPF configuration, which, under current circumstances, presupposes a risk of use for phishing. Bad faith is further evidenced by the provision of false identification data during registration, misleadingly suggesting a link with INTERPOL, cooperating with the National Police” (translated from French. See WIPO, D2024-0424, État français, représenté par le ministre de l’Intérieur et des Outre-Mer contre POLICE INTERPOL, policenationale.net, 15 March 2024 : ompi.int).
Government authorities, in France and elsewhere, are regularly pushed to alert their citizens and residents about the cyber threats they face[3]. The surveillance of domain names and the swiftness of the UDRP procedure help to limit the extent of these fraudulent practices.
Public order at stake
The issue of public order is central to this case, given the direct involvement of the French State and the fraudulent use of a trademark associated with a public institution. By reclaiming control over the disputed domain name, France seeks not only to protect the trademark “POLICE NATIONALE” but more importantly to defend the monopoly it holds on sovereign powers, including authority and public security. Maintaining citizens’ and residents’ trust in these institutions justifies that no such usurpation is tolerated. It is worth noting that the Naming Charter of the French registry requires prior examination for any domain name containing the words “police,” “polices,” “policier,” or “policiers”[4].
However, such restrictions do not exist in the rules governing generic top-level domains (such as .net). The UDRP mechanism can thus play a crucial role in protecting public order by enabling the swift and effective resolution of disputes concerning domain names that infringe on trademarks related to sovereign institutions (in this case, an ordered transfer six weeks after the complaint was filed).
France fights for its domain names
A precedent: the case “gendarmerienationnale.info”
In the WIPO case D2022-4666[5], France had previously been induced to initiate a UDRP procedure against the holder of the domain name <gendarmerienationnale.info>. This domain name had been created by an individual who similarly usurped the name “Brigade Mineur Protection des Enfants” (which can be translated as “Child Protection Brigade”). The defendant had also configured a mail server, suggesting fraudulent use of the domain name for phishing. This domain name was transferred to the French State.
The “France.com” case
The French State’s actions against domain names involving cybersquatting are part of a broader strategy to protect its interests against the abusive use of domain names. The “France.com” saga is a remarkable example. The French State sued the American company France.com, Inc., the holder of the eponymous domain name. In a ruling on September 22, 2017, the Paris Court of Appeal ordered the transfer of the domain name to the State, adopting the following reasoning: “The term ‘France’ constitutes an element of identity for the French State akin to the surname of an individual, referring to the national territory in its economic, geographical, historical, political, and cultural identity, which is intended to promote the range of products and services covered by the trademarks in question”[6].
Feeling illegitimately dispossessed, France.com, Inc. initiated proceedings in the United States, which proved futile as, on March 25, 2021, the Fourth Circuit Court of Appeals recognized the French State’s immunity, which France.com, Inc. had unsuccessfully tried to overturn by invoking two exceptions provided by the Foreign Sovereign Immunities Act: commercial activity and expropriation[7]. France.com, Inc.’s appeal to the U.S. Supreme Court was denied[8]. The French Court of Cassation upheld the reasoning of the Paris Court of Appeal in a ruling on April 6, 2022[9]. Dissatisfied, France.com, Inc. appealed to the European Court of Human Rights (ECHR) based on Article 1 of Protocol No. 1 to the Convention, which guarantees property rights, including against expropriation. Ultimately, in a decision on October 19, 2023, the ECHR stated:
“While the applicant company argues that the State ‘did not need’ the domain name in question, the Court recognizes that the contested measure aimed to end the violation of the State’s right to its name and identity, as well as to prevent confusion among internet users who might identify this site as emanating from the French State or an official service benefiting from its endorsement. In the Court’s view, there is no doubt that the interference pursued a public interest goal”[10].
The issue of protecting country names extends beyond the “France.com” case. There are calls, notably within the World Intellectual Property Organization, to “Protect country names and geographical names of national importance against their allocation as top-level domain names in the DNS”[11].
The role of the State Intangible Assets Support Mission
The French State Intangible Assets Support Mission (Mission d’Appui au Patrimoine Immatériel de l’État plays a significant role in managing and protecting the French State’s intangible assets, including the domain names. As an entity dedicated to enhancing and defending the State’s intangible assets, APIE actively monitors trademarks and domain names linked to public institutions. While domain name protection is essential for many businesses affected by cybersquatting and counterfeiting, it is an obligation for the State. The French State Intangible Assets Support Mission’s proactive involvement in disputes such as <policenationale.net> demonstrates its commitment to protecting symbols of state authority against abuse and fraudulent use.
[1] WIPO, D2024-0424, État français, représenté par le ministre de l’Intérieur et des Outre-Mer contre POLICE INTERPOL, policenationale.net, 15 March 2024 : wipo.int.
[2] See the semi-figurative trademark No. 4825467 registered on 13 December 2021, by the French National Institute of Industrial Property, noting that this trademark is not the first of its kind.
[3] See, for instance, Cybermalveillance.gouv.fr, « Campagne de messages frauduleux réclamant le paiement d’une contravention », 7 mars 2023 et Antai.gouv.fr, « Attention aux SMS et aux sites frauduleux ! », 17 juillet 2023.
[4] AFNIC, Charte de nommage, Liste des termes soumis à examen préalable : afnic.fr.
[5] WIPO, D2022-4666, État Français, représenté par le Ministre de l’Intérieur et des Outre-Mer contre Brigade Mineur Protection des Enfants, 25 January 2023 : wipo.int.
[6] Paris Court of Appeals, Pôle 5, 2ème ch., 22 sept. 2017.
[7] France.com, Inc. v. The French Republic, No. 20-1016 (4th Cir. 2021) and « Affaire « france.com » : immunité souveraine de l’État français et rejet des prétentions de la société France.com, Inc. », iptwins.com, 2021-04-28.
[8] France.com, Inc. v. French Republic, No. 20-1016, cert. denied, 593 U.S. (2021) and « L’affaire “France.com” portée devant la Cour suprême des États-Unis » : iptwins.com, 2021-09-30.
[9] Cass., com., 6 April 2022, No. 17-28.116: Légifrance.gouv.fr and « “France.com” : « le territoire national dans son identité économique, géographique, historique, politique et culturelle » : iptwins.com, 2022-04-08.
[10] ECHR, 5th sect., no 35983/22, FRANCE.COM INC. v. la France, 19 October 2023 : echr.coe.int (in French).
[11] SCT/41/6 REV. : (ompi.int). See also: « Le nom géographique d’importance nationale : bien commun ou monopole privé ? », iptwins.com, 2022-10-22.
