Docket number: 04/01570

Decision under appeal:  decision of February 25, 2003 - Tribunal de Grande Instance of Paris - docket no. 2001/15708

APPELLANT

S.A. Free Goal

acting via its legal representatives

19 Boulevard St Denis

75002 Paris

Represented by SCP Lagourgue - Olivier, avoués licensed to plead before the Court of Appeal, and by Maurice Lantourne, attorney-at-law, toque L12

RESPONDENT

STE Business Village

Acting via its legal representatives

5 avenue Kleber

75016 Paris

Represented by SCP Roblin - Chaix de Lavarene, avoués licensed to plead before the Court of Appeal, and assisted by Kaufman Gautier, attorney-at-law, toque C697, pleading on behalf of Hollier - Larousse law firm.

SAS BNP PARIS BAS E-CUBE HAS BEEN SUBSTUTED AND SUBROGATED TO THE RIGHTS OF BUSINESS VILLAGE

1 boulevard Haussman

75009 Paris

acting via its legal representatives domiciled as such for the service of process at the company’s headquarters at the above address

Represented by SCP Roblin - Chaix de Lavarene, avoués licensed to plead before the Court of Appeal, and assisted by Kaufman Gautier, attorney-at-law, toque C697, pleading on behalf of Hollier - Larousse law firm.

Mr. L T

Acting as official receiver for the liquidation of FREE GOAL

Represented by SCP Varin Petit, avoués licensed to plead before the Court of Appeal, assisted by B. Florent, attorney-at-law, member of the Paris Bar, toque E 549

COMPOSITION OF THE COURT:

In application of the provisions of Article 786 of the Code of Civil Procedure, the case was pleaded on November 3, 2004 in open court, none of the attorneys having objected thereto, before the Honorable Carre-Pierrat, Chief Judge, who served as the reporting judge.

He summarized the facts and the arguments of the parties for the Court, sitting in the following deliberating panel comprised of:

            The Honorable Alain Carre-Pierrat, Chief Judge

The Honorable Marie-Gabrielle Magueur, Advisor

The Honorable Dominique Rosenthal-Rolland, Advisor

CLERK:            Jacqueline Vignal

DECISION:              -    PURSUANT TO ADVERSARIAL PROCEEDINGS,

-          pronounced in open court by Chief Judge Alain Carre-Pierrat,

-          signed by Chief Judge Alain Carre-Pierrat, and by Jacqueline Vignal, Clerk in attendance when the decision was read out.

In respect of the appeal filed on March 28, 2003 by Free Goal against the decision of February 25, 2003 by the Tribunal de Grande Instance of Paris, which:

·                     found that the sending of an electronic message on May 15, 2001 to Transport Levage, ostensibly by Business Village, was ascribable to Free Goal;

·                     found that this act constitutes wrongful usurpation of the trade name, company name and domain name of Business Village;

·                     on that basis ordered Free Goal to pay to Business Village the sum of EUR 5,000 in damages;

·                     dismissed Business Village’s claims based on the infringement of its Business Village trademark no. 98 754 748;

·                     declared that it was not necessary to grant an injunction order subject to a fine for non-compliance or a publication order;

·                     issued an interim enforcement order;

·                     ordered Free Goal to pay to Business Village the sum of EUR 4,000 on the basis of Article 700 of the Code of Civil Procedure, as well as all costs.

In view of the pleadings filed on July 28, 2003, pursuant to which Free Goal, seeking the reversal of the first-level decision under appeal, requested the Court of Appeal to dismiss all of Business Village’s claims and order it to pay to it the sum of EUR 5,000 in damages for frivolous proceedings and EUR 5,000 on the basis of Article 700 of the Code of Civil Procedure;

In view of the pleadings of January 26, 2004, pursuant to which BNP Paribas E-Cube, successor to the rights of Business Village, sought the upholding of the decision under appeal, except in its provisions dismissing its claims in infringement, and requesting this Court to:

·                     find that:

■          Free Goal, by using the “Business Village” company name and the jlondon@business-village.fr electronic mail address committed infringement of trademark no. 98754498, and usurpation of the company name, trade name and Internet domain name of Business Village;

■          by interfering with the commercial policy and expansion of Business Village, Free Goal also rendered itself guilty of a wrongful act against Business Village;

■          the damage sustained by Business Village due to Free Goal’s course of conduct amounts to EUR 30,000;

·                    issue an injunction against any use by Mr.  T, in his official capacity, of the “Business Village” trademark, subject to a firm fine of EUR 1,500 per event of non-compliance ascertained and per continuing day of non-compliance as of the date of the appellate decision to be entered;

·                    authorize it to have the decision to be entered published in five newspapers or magazines of its choice;

·                    set at EUR 65,000 the amount of its claim against Free Goal in the context of its judicial liquidation;

·                    order Mr.  T, in his official capacity, to pay for the costs.

In view of the pleadings filed on May 5, 2004, pursuant to which Mr.  T, impleaded in these proceedings as the official receiver handling the judicial liquidation of Free Goal, requested this Court to:

·                     ascertain that the motion for an injunction against the use of the trademark has become objectless;

·                     acknowledge that he defers to the court on the merits of the claims concerning the setting of the claim by BNP Paribas - E-Cube;

·                     order the latter to pay for all costs;

IN RESPECT OF WHICH, THE COURT:

Considering that, reference being expressly made to the first-level decision under appeal and to the parties’ pleadings for a full presentation of the facts and of the proceedings, it suffices to recall that:

·                     Business Village, to whose rights BNP Paribas E-Cube (hereinafter “BNP”) has succeeded, has among its business activities the supply, via computer telecommunication networks, of information, communication, exchange, commercial, training and advisory services, and operates the www.businessvillage.fr website;

·                     on October 15, 1998, it filed BUSINESS VILLAGE trademark no. 98754498 with the INPI to cover, inter alia, among other services: Telecommunications, Communication by computer terminals, electronic transmission of data, images, documents by computer terminations and by all other transmission systems such as broadcasting, cable, satellite, Internet, communication services by computer networks, electronic messaging services;

·                     on May 16, 2001, Business Village was contacted by Transport Levage, which had just received, on May 15, 2001, an electronic message whose sender was identified as jlondon@business-village.fr which, presented under the (false) signature of an employee of Business Village, by using her messaging address, not only proposed a partnership between the two companies but considered a merger;

Considering that it has been established, and not contested that in fact the disputed mages had transited via the website of SIVIT.ORG, which had stated that the message came from a site it hosts, www.amailanonyme.com, which enables electronic messages to be sent by concealing the identity of the sender which was in fact FREE GOAL;

Considering that the first judges, for pertinent reasons which the Court of Appeal adopts, precisely found that these facts constituted wrongful usurpation of the company name, trade name and domain name of Business Village and damaged this company’s reputation;

It follows that, on this point, the decision under appeal shall be upheld;

Considering, however, that BNP rightfully finds fault with the decision for not having found there to have been infringement of its Business Village trademark, primarily on the grounds that the disputed message was not sent by Free Goal in the context of a commercial activity intended to provide its recipient a service by advancing a trademark, but in view of damaging Business Village or its employee, Mrs. London, by leaving it to be surmised that they employed particularly aggressive commercial strategies;

Indeed, aside from the fact that the disputed message contained proposals of a commercial nature, the sole use of a trademark constitutes infringement, without it being necessary, except in special circumstances that are not present in the case at hand, to prove intent by the infringer;

            It follows that, regarding the claim in infringement, the decision under appeal shall be reversed in that Free Goal, by using the “Business Village” company name and the jlondon@business-village.fr electronic mail address, infringed trademark no. 9875449;

·                     on the relief sought:

Considering that it results from the elements of the case file that the entire damage sustained by BNP can be compensated by an award of damages of EUR 10,000, sum at which the claim held by BNP shall be set against the company under judicial liquidation, Free Goal;

            Considering that, given the situation of Free Goal, which no longer has any activity, the motions for an injunction order and for a publication order presented by BNP should be rejected;

FOR THESE REASONS

The Court:

            Upholds the first-level decision under appeal, except as regards the claim brought in infringement and the amount of the damages; and

            By a new ruling;

            Finds that Free Goal, by using the “Business Village” company name and the jlondon@business-village.fr electronic email address, infringed trademark no. 98754498;

            Sets at EUR 10,000 the claim held by BNP Paribas - E-Cube held over Free Goal, company in judicial liquidation;

            Rejects all other motions;

            Orders Mr.  T, in his official capacity, to pay for the costs on appeal which shall have priority ranking in the liquidation.