REGISTRIES
SHOULD
REGISTRIES BE THE INTERNET POLICE?
f someone commits a crime in a town, it’s perhaps unfair to tarnish the town’s name because of that one person; the town itself is not responsible for how its inhabitants behave.
I
To an extent, this theory can be applied to a domain name registry, which provides access to a web address but does not take the blame for rogue behaviour on that site.
But when a website is found to infringe intellectual property rights, how much blame can be levied on the registry?
Tat question has been posed by a dispute between Cartier, the French watch and jewellery designer, and Nominet, the registry for .uk domain names. Nominet has more than 10 million .uk domain names in its portfolio; other registries, including Verisign, which manages the .com top-level domain (TLD), have many more to manage.
Cartier’s parent company, Richemont, filed a lawsuit against Nominet at the end of 2013, having taken issue with 12 websites which, it
said, were selling counterfeit watches that infringed the ‘Cartier’ trademark.
Te jeweller sought an order which, if granted, will give brand owners the power to bypass standard
If a website is found to infringe a brand owner’s IP rights, how much liability can be laid at the registry’s feet? TBO looks at the interesting situation confronting Nominet, the .uk domain registry.
expected to be heard at the UK High Court in February 2015.
In a letter to Nominet, Richard Graham, head of digital IP at Richemont, says his company is seeking to develop a range of tools that can be deployed “quickly and efficiently” to prevent internet users from accessing websites that offer counterfeit goods.
But Nick Wenban-Smith, senior legal counsel at Nominet, tells TBO that
as “quite a surprise”, particularly
the lawsuit came given his
company’s “established methods” for removing suspected rogue websites and that Nominet had already suspended the websites.
“We have a procedure where if false contact details are given for a domain owner then we will act on it,” says Wenban-Smith, referring to the Whois procedures.
“We have good relationships with brand owners and they get the outcome they want within a reasonable time-frame. Te fact that legal action continued despite us suspending the websites came as quite a surprise, especially given our previously good relationship with Cartier.”
procedures for determining who
owns a domain—looking it up on Whois—and instead force registries to take down suspected IP-infringing websites following a court order.
Cartier’s complaint, which still stands despite Nominet suspending the websites—none of which actually contained the Cartier trademark—says the .uk registry has given the addresses a platform to infringe its trademarks. Te lawsuit was filed in October last year and is
www.trademarksandbrandsonline.com
Cartier declined to comment on the developments when contacted by TBO.
The intermediary role
According to Katie Withers, senior legal consultant at law firm DLA Piper, if the court finds Nominet is facilitating infringement then “in order to avoid similar liability”, other registries will need to suspend web addresses summarily when notified of a claim for infringement.
But Matthew Harris, partner at Waterfront Solicitors LLP, says the issue is not about Nominet
Trademarks & Brands Online Volume 3, Issue 2 17
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