How to bring an intermediary to justice in a domain name dispute
A year on year increase in the number of domain name disputes and the uniformity in the courts’ approach to resolving such conflicts is giving trademark professionals more certainty when it comes to collecting evidence and planning procedural actions. However, not everything can be predicted.
One common obstacle is where an infringer uses an invalid address for the administrator when registering a domain name – this makes it impossible for them to be held liable even if a court finds against them.
For example, a trademark owner discovers that a confusingly similar designation is being used in a domain name and on the accompanying website. The activities conducted by the website’s owner are similar to its own activities.
In this case, the trademark infringers are:
- the person who registered the infringing domain name; and
- the domain name administrator, which provides the ability to post content.
The administrator manages the domain and is responsible for the content posted on the website. It is not possible to use the website’s resources without their consent, therefore, possible violations of third-party rights related to the selection and the use of the domain may arise, along with the risk of losses related to these violations.
A domain name can be registered to both a legal entity and an individual, information about which is hidden and not shared.
Information about the administrator can be obtained by sending a lawyer's request to the registrar/hosting provider. But if such a request yields only a false address (eg, a non-existent street or house) then the trail runs cold and it become impossible to protect the trademark at issue.
However, when examining the chain of violation of trademark rights, namely between the rights holder and the administrator, a catalyst emerges – the registrar/hosting provider.
This is an information mediator, which is not responsible for violations of trademark rights. While an administrator can select a domain name and place a similar designation on its website, the registrar provides access to this opportunity and the posted information only.
However, the Civil Code establishes certain conditions that such intermediaries must meet if they are to avoid liability for illegal behaviour.
Article 1253.1(2) states that:
“An information mediator delivering material on an information-telecommunication network is not liable for a breach of intellectual rights that has occurred as a result of such delivery, if the following conditions are simultaneously observed:
1) he is not the initiator of that delivery and does not designate the recipient of said material;
2) he does not alter said material in the provision of communication services, save the alterations effectuated for the purpose of ensuring the technological process of material transmission;
3) he did not know and could not have known that the use of the relevant result of intellectual activity or means of individualisation by a person that initiated the delivery of the material containing the relevant result of intellectual activity or means of individualisation was unlawful.”
Further, Article 1253.1(3) stipulates that:
An information mediator allowing an opportunity for placing material in an information-telecommunication network is not liable for a breach of intellectual rights that has occurred as a result of placement of the material in the information-telecommunication network by a third person or on the instructions thereof, given the simultaneous observance of the following conditions by the information mediator:
1) he did not know and could not have known that the use of the relevant result of intellectual activity or the means of individualization contained in such material was wrongful;
2) having received an application in writing from the right-holder about a breach of intellectual rights with reference to the website page and/or to the web address on the Internet where such material has been placed he took timely measures, which were necessary and sufficient, to terminate the breach of the intellectual rights. A list of the measures deemed necessary and sufficient, and the procedure for implementing them may be established by law.
Thus, in certain situations, the registrar/hosting provider can still be brought to justice for the illegal use of a trademark in a domain name. To assess the possibility of doing so, the rights holder should analyse the intermediary’s actions to see whether they meet the conditions described above. If even one of the listed conditions has not been observed, action may be pursued against the information mediator.
This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.
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