Does ‘France’ Belong to the French?

Does the French government own the word “France?” This was the question at the heart of a domain-name lawsuit that came David Ludwig’s way in 2018.

His client, a dual French-American citizen, had operated France.com since 1994. The site sold tours to popular French destinations and other travel services.

Then, six years ago, France decided it wanted the name. A French court ordered France.com to turn over its domain to the French government, or agree to lease or license it. “The domain registrar in Florida read it wrong, thinking it was an order to turn it over, so he went ahead and turned it over,” Ludwig says. That’s when his team stepped in.

“They claimed they had automatic trademark rights to the word ‘France.’ But there is no such thing as automatic trademark rights,” according to Ludwig.

His client was able to bring his case against France in Virginia, since Virginia is the location of all dot-com registries. But France’s tourism development agency managed to defeat the claim because a sovereign government can’t be sued in the U.S. unless it’s engaging in commerce in a particular case—which technically it wasn’t. That happened after it seized France.com to promote France’s tourism interests.

When the U.S. Supreme Court declined the case, Ludwig’s client returned to the French courts to follow up on pending appeals. Ludwig was not involved in those, but the French government now runs the domain.

“The poor guy, he spent 25 years building this travel agency online and just in a blink of an eye, it was taken from him,” Ludwig says.

The Leesburg intellectual property attorney, who has carved out a niche handling domain-name disputes at Dunlap Bennett & Ludwig, is much more used to scoring wins. A recent case involved Monday Haircare (mondayhaircare.com), which sells its luxury hair products online. When a Lebanese competitor hoped to divert business away by advertising its products on mondayhc.com, Ludwig filed a complaint with the U.N.’s intellectual property dispute center. The offending site was locked and the domain transferred to Ludwig’s client.

On the internet, information merges and jurisdictional lines blur—creating a burgeoning need for settling IP disputes. It’s what attracted Ludwig in the first place.

“I love solving problems and helping people find solutions to complex problems,” he says.

Ludwig grew up in Southern California, and from the start he was drawn to dense subjects that many students avoid. He liked math and science in high school and studied occidental philosophy for his master’s degree.

During a gap year in the early 2000s, Ludwig worked as a bookkeeper for an internet service provider. Lawsuits over music and video file-sharing were heating up, and he could see the growing need for legal help. He aborted plans for a Ph.D. in philosophy and headed instead to law school.

“A lot of tech folks are do-it-yourselfers who trend away from hiring big white-shoe law firms,” Ludwig says. “They just figure it out on their own. But that can lead to a lot of misinformation.

“Back in the days when people were all downloading music, people thought, ‘It’s OK because everybody’s doing it.’ But that’s not how the law works.” The basis of domain name law is trademark infringement, in which two names are confusingly similar. “But there are a lot of extra things you need to prove to bring a domain name case,” Ludwig says.

For example, a domain name might violate trademark law if it’s a copycat site being used to divert customers away from an established company, such as in the case of Monday Haircare. There’s also cybersquatting, which happens when someone registers a domain name, never uses it for a legitimate business purpose, and years later wants millions to turn it over to a company that has trademarked that name. To win, the trademark owner needs to prove bad faith.

But as in the France.com suit, not every case involves a squatter.

“The disputes are interesting. And really, both sides have a legitimate argument,” Ludwig says. “The trademark holder has trademark rights and they feel they should own the domain. On the other side, somebody has bought the domain property at fair market value and thinks they have the right to sell it.”

Millions—even billions—of dollars can be at stake.

“People don’t realize how much investment goes into a company’s website,” Ludwig says. “As with all things trademark, branding is huge. And domains are the way we brand online.” 

Reading Corner

When he’s not poring over ever-evolving IP laws, David Ludwig enjoys reading books. As with his chosen subjects at school, he’s not always going for light diversion.

Here are a few of his all-time favorites:

• Fear and Trembling by Søren Kierkegaard 
• Being and Time by Martin Heidegger
• Crime novels by Lee Child and Tony Hillerman