REGISTRIES
being “liable for infringement”, but instead being labelled an “intermediary”.
“Cartier is arguing that Nominet has a responsibility as an
intermediary to pull
infringing content down and, if it doesn’t, it should get a court order to remove the websites,” says Harris, referencing the EU’s Enforcement Directive, legislation that
should remove infringing content.
“Nominet and other registries don’t do anything other than associate a domain name with an internet protocol address where you can get access to a website. At no point do registries reproduce infringing content.
“However, they provide a crucial piece of infrastructure that allows the user to view the website—that’s what Cartier’s argument is.”
Withers says that a victory for Cartier would require TLD registries to “police” the contents of websites under their control.
“A successful High Court claim by Cartier would be persuasive and would establish that, in certain circumstances, a domain name registry will be considered to participate and consent in an online infringement.
“Ultimately, Cartier is hoping to establish a precedent that could be relied on in other jurisdictions in which registries are less cooperative than Nominet.”
Antony Gold, partner at Harrison Goddard Foote LLP, says responsibility for ensuring “scrupulous” behaviour should not lie with a registry.
“Nominet and other registries provide a dispute resolution service and can provide assistance in obvious examples of counterfeiting where sites need to be taken down quickly.
“It is very difficult to see how they could have either the resources or an obligation to do anything other than provide reactive help when absolutely necessary.
“With counterfeit websites it is also important to involve the credit card companies that might be accepting payment from customers, as well as the police and the Office of Fair Trading, which are other sources of possible help when the fraudster or victims are in the UK.”
While some cases of online counterfeiting involve the use of an established brand’s name, or a variation of that name, in the web address, none of the websites Cartier took issue with actually misused its trademark.
18 Trademarks & Brands Online
“NOMINET AND OTHER REGISTRIES DON’T DO ANYTHING OTHER THAN ASSOCIATE A DOMAIN NAME WITH AN INTERNET PROTOCOL ADDRESS WHERE YOU CAN GET ACCESS TO A WEBSITE.”
For Withers, this raises interesting questions about the future for registries, which may have to act on domains that don’t incorporate trademarks.
Withers says: “It will be a very significant concern for registry operators, which will be risking liability for content published through all domain names in their space, even if those names do not themselves contain any trademarks or brands.
“As well as imposing a significant administrative burden, it will also set the scene for brand owners to get material removed on demand, which could in turn expose registry operators to claims from their own customers if the brand owners’ claims are not well-founded.”
Gold says the administrative burden on a registry could have wide-ranging implications.
“Imposing legal liability on Nominet to provide support that it already gives voluntarily seems both unjustified and unnecessary. I would guess that the most likely effect is that it would get overwhelmed by the burden of
fulfilling its
legal liability. Costs would go up and the service would go down.”
Volume 3, Issue 2 Gold, however, disagrees that the decision
could set a precedent that registries in other jurisdictions would have to follow.
says intermediaries
“Even if a court did rule in favour of Cartier, the decision would be specific to the UK, and any similar actions against other registries in a different jurisdiction would be governed by the law of that country.
“It is difficult to see how this case can be presented as in some way a test case to establish a precedent.”
Relying on Whois
Te case inevitably raises questions about the reliability of the Whois system for establishing who is behind a website. Despite Cartier and other trademark owners having already used the Whois system to suspend domains, the dispute with Nominet seems to have been brought in a bid to go above and beyond existing Whois procedures.
“Te case underlines how reliant the Whois system is on the veracity of information submitted by registrants,” says Gold, adding that there are good reasons for registrants not wanting their contact details to be publicly available.
“Irrespective of the outcome of this dispute, it may well prompt domain name registries to consider how they can ensure that the information submitted by their customers is accurate and kept up to date.”
For Harris, an interesting question is what happens when accurate contact details are given but the website in question still helps to infringe IP.
“In those circumstances the person whose rights are infringed could not go to Nominet and get them to take it down, as Nominet offers that procedure only for a website that has false contact details.
“In that case, whether or not Nominet is an intermediary, and whether the Enforcement Directive applies to it, will be highly relevant. Tat said, I don’t know many counterfeiters that would give their true name and address, but it would be an interesting thing to consider.”
It’s clear that defining the role of domain name registries in tackling IP infringement is tricky. Help is at hand through Whois and dispute resolution policies, but are they
too easily
abused? Does a registry facilitate infringement merely by providing the platform for it to thrive upon? Cartier certainly appears to think so.
Te case will be one to watch for brands and registries worldwide. A decision, when it comes, could be fascinating.
www.trademarksandbrandsonline.com
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