Block on '.com' domain name may curb online infringement

Netherlands

In a decision that is likely to have an impact on trademark owners and practitioners, the Amsterdam District Court has ruled that '.com' top-level domain names, hosting websites offering goods that infringe rights protected in the Netherlands, can be made inaccessible to Dutch consumers.

The case (KG 03/1457 SR) arose when Cassina SpA, an Italian-based furniture dealer, filed an action against an Italian competitor - Classico Mobile. Cassina had been granted the exclusive right by various furniture designers to produce and sell their designs. Cassina discovered that Classico Mobile was selling reproductions of these designs via its website at 'classicomobile.com'. As (i) the designs were copyright protected in the Netherlands, and (ii) the website was accessible to Dutch consumers, Cassina started court proceedings against Classico Mobile in the Netherlands, claiming that Classico Mobile should be ordered to make its website inaccessible to Dutch internet users.

Classico Mobile acknowledged the copyrights invoked by Cassina. However, it argued that it only sold the reproductions in Italy where the designs were not protected. The Amsterdam District Court rejected this contention, reasoning that given the fact that the website can be accessed in the Netherlands, it was possible that the infringing furniture could be sold in the Netherlands. It therefore ordered Classico Mobile to make its website inaccessible to Dutch consumers.

This is the first time that a Netherlands court has ordered a party to make its website inaccessible on the grounds of intellectual property right infringement. It is of relevance to trademark owners and practitioners because it may well offer mark owners a new way of stopping online infringement.

Jasper DeGier, Allen & Overy, Amsterdam

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