The geographical name of national importance: common good or private monopoly?

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 “toponyms of national importance”.

The closest international instrument 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 15 April 1994 is silent on the matter. Note that the first was modified for the last time in 1979. Vint Cerf and his colleagues had just succeeded in linking three networks two years earlier, and in 1983, Jon Postel and his colleagues created the Domain Name System (DNS). As for TRIPS, it just preceded the domain name rush of the mid-1990s. Suffice it to say that neither sovereign states nor trademark owners were informed and therefore did not 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 weren’t talking about “brand nation”. This complex concept of undeniable reality has grown in importance since the early 2000s. A growing number of states insist on exercising sovereign control over domain names of national importance.

Some states have consistently defended the name(s) by which they are known under ISO 3166 or common 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. However, the latter must take due account of the opinions of governments and public authorities. Moreover, if the promotion of competition in the registration of domain names constitutes one of the central values ​​of ICANN, it is on condition that the public interest is the beneficiary. We can legitimately support the idea that register a domain name such as for private purposes is against the public interest and therefore against ICANN’s values. Thus, on March 28, 2007, the GAC adopted principles relating to new generic top-level domains (new gTLDs), including article 2.2, which stipulates that ICANN must in particular avoid the registration of country names. In the same vein, New gTLD Section 4 Specification 5 The Standard Registry Agreement prohibits the registration of country names in ASCII characters, IDN, and the six official languages ​​of the United Nations without the prior approval of the government authorities of the relevant state. Of the 94 sovereign states that have specified their intentions regarding the reservation of only ten have expressly waived their right (gac.icann.org), only 10%.

These questions will be discussed on November 21, 22 and 23, 2022, during a meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications of the World Intellectual Property Organization. The draft agenda examines several discussions on the protection of country names (ompi.int), including the conflict 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 of Switzerland concerning the protection of names of countries of national importance in the DNS”:

“to protect country names and geographical names of national significance from being delegated as top-level domain names in the DNS, unless the request for delegation counts with the explicit support or non-objection of the competent public authority concerned”. (SCT/41/6 REV.: (wipo.int)).

The wording invites us to rethink the allocation of domain names identical to country names in order, on the one hand, abolish private monopolies and cases of cybersquatting for, on the other hand, optimize their use for the benefit of the community. This formulation, however, deserves an update that would extend the scope of the proposal beyond the DNS to reach the alternative extensions created through block chain Technology. These new top and second level domains and non-fungible tokens (NFT) 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 (.ETH for Ethereum, the issuer of the eponymous cryptocurrency) is problematic. Countless brands and countries are already victims. History repeats itself, but this time no one is ignoring the threat.

In this respect, the judicial attribution of the domain name (cass., April 6, 2022, n° 17-28.116: courdecassation.fr) for the benefit of the economic interest grouping (EIG) Atout France is exemplary. A GIE 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, to the director of communication of the organizing committee of the Paris 2024 Olympic and Paralympic Games, to the representative of the minister responsible for culture , the representative of the minister responsible for sports, the managing director of Southern Europe of the Accor group, the managing director of Air France, the chairman of Vinci Railways, the deputy manager of Vinci Airports, the chairman of the National Union of Associations of tourism and outdoor activities, the President of Travel Companies and the President of the Union des Métiers et des Industries de l’Hôtellerie. We can say that the domain name , eponymous of the sovereign name “France”, is now optimally exploited as a common good of general interest. Finally, let us recall that sovereignty rhymes with inalienability and imprescriptibility.

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