December 15, 2004 has to be marked as the day the Court of Appeal of Paris (4th Chambre) decided to recognize for the first time that the use of an electronic address with fraudulent using of a domain name ("spoofing") constitutes counterfeiting of the corresponding mark.
Company A had received electronic mail having apparently been sent by company B, but which had in fact been sent by company C, fraudulently using Company B’s identity – through the domain name.
The decision of the Court of first instance (TGI Paris 25 February 2003) just estimated that company C’s behavior constituted a faulty usage of Company B’s commercial denomination, corporate name and domain name and had refused to retain counterfeiting of the mark, motivating that the contentious electronic mail had not been sent by Company C “within the context of a commercial activity with vocation to procure the addressee with a service while taking advantage of a mark, but with the goal to cause damage” to company B.
The Court of Appeal justly invalidates this decision with the specification that the sole usage of a mark constitutes counterfeiting, being of little importance to proof the counterfeiter’s intentions.
After the remarkable decision dated May 5, 2004 of the Paris’ Court of first instance (TGI) condemning a spammer having sent non solicited electronic mails, for violation of the contracts binding him with his access provider and his electronic mail provider, this decision will enable the services of electronic messages to install systematic legal actions against the enthusiasts of spoofing and thus fight the Spam they would send since this Spam would be constituent of counterfeiting. It’s the beginning of a new era....
Legal Director of AOL France
Member of the Scientific Council of Juriscom.net