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Cartier sues Nominet hoping to set global domain name take-down precedent

Kevin Murphy, January 22, 2014, Domain Policy

Luxury watchmaker Cartier has taken .uk registry Nominet to court, hoping to set a precedent that would enable big brands to have domain names taken down at a whim.

The company sued Nominet in a London court in October, seeking an injunction to force the registry to take down 12 domain names that at the time led to sites allegedly selling counterfeit watches.

We’ve only become aware of the case today after Nominet revealed it has filed its defense documents.

Judging by documents attached to Nominet’s court filings, Cartier sees the suit as a test case that could allow it to bring similar suits against other “less cooperative” registries elsewhere in the world.

In a letter submitted as evidence as part of Nominet’s defense, Richard Graham, head of digital IP at Cartier parent company Richemont International, said that he was:

seeking to develop a range of tools that can be deployed quickly and efficiently to prevent Internet users accessing websites that offer counterfeit goods… [and] looking to establish a precedent that can be used to persuade courts in other jurisdictions where the registries are less cooperative.

It’s worth noting that Richemont has applied for 13 dot-brands under ICANN’s new gTLD program and that Graham is often the face of the applications at conferences and such.

Pretty soon Richemont will also be a domain name registry. We seem to be looking at two prongs of its brand protection strategy here.

According to the company’s suit, the 12 domains in question all had bogus Whois information and were all being used to sell bogus Cartier goods.

None of them used a Cartier trademark in the domain — this is explicitly about the contents of web sites, not their domains names — and Cartier says most appeared to be registered to people in China.

Rather than submitting a Whois inaccuracy complaint with Nominet — which could have led to the domains being suspended for a breach of the terms of service — Cartier decided to sue instead.

Graham actually gave Nominet’s lawyers over a week’s notice that the lawsuit was incoming, writing his letter (pdf) on October 22 and filing the complaint (pdf) with the courts November 4.

Cartier seems to have grown frustrated playing whack-a-mole with bootleggers who cannot be traced and just pop up somewhere else whenever their latest web host is persuaded to cut them off.

Graham’s letter, which comes across almost apologetic in its cordiality when compared to the usual legal threat, reads:

Cartier therefore believes the most cost effective and efficient way to disrupt access to the Counterfeiting Websites operating in the UK is to seek relief from you, as the body operating the registry of .uk domain names.

Armed with the foreknowledge provided by the letter, Nominet reviewed the Whois records of the domains in question, found them lacking, and suspended the lot.

Ten were suspended before Cartier sued, according to Nominet. Another expired before the suit was filed and was re-registered by a third party. A fourth, allegedly registered to a German whose scanned identity card was submitted as evidence by Nominet, was suspended earlier this month.

As such, much of Nominet’s defense (pdf) relies upon what seems to be a new and obscure legal guideline, the “Practice Direction on Pre-Action Conduct”, that encourages people to settle their differences without resorting to the courts.

Nominet’s basically saying that there was no need for Cartier to sue, because it already has procedures in place to deal with counterfeiters using fake Whois data.

Also offered in the defense are the facts that suspending a domain does not remove a web site, that Nominet does not operate web sites, and the following:

Nominet is not at liberty under its Terms and Conditions of Domain Name Registration to suspend .uk domain names summarily upon mere receipt of a demand from someone unconnected with the domain name registrant.

That seems to me to be among the most important parts of the defense.

If Cartier were to win this case, it may well set a precedent giving registries (in the UK at least, at first) good reason to cower when they receive dodgy take-down orders from multibillion-dollar brands.

Indeed, that seems to be what Cartier is going for here.

Unfortunately, Nominet has a track record of at least accelerating the takedown of domains based on nothing more than third-party “suspicion”. Its defense actually admits this fact, stating:

Inaccurate identity and contact information generally leads to the suspension of a domain within three weeks. Where suspicions of criminality are formally confirmed by a recognised law enforcement agency, suspension may be very significantly expedited.

I wonder if this lawsuit would have happened had Nominet not been so accommodating to unilateral third-party take-down notices in the past.

In a statement to members today, a copy of which was sent to DI, Nominet encouraged internet users to report counterfeiting web sites to the police if and when they find them.

These are the first four new gTLD domain names

Kevin Murphy, December 31, 2013, Domain Registries

Two luxury goods companies have the honor of being the first to register domain names in a new gTLD.

Today, the first four domain names registered to actual registrants popped up in the zone file for dotShabaka Registry’s Arabic “.web” — شبكة.

شبكة. exited its mandatory Sunrise period on Sunday; the four new names appear to be the first ones to get name servers after their Sunrise applications were approved.

The two registrants, according to Whois records, are Richemont International and Rolex.

Richemont is itself a new gTLD applicant. The company has taken a strong interest in the program, with head of digital IP Richard Graham even moderating a new gTLDs conference in March.

The four names (with my best guesses at a translation) are:

None appear to be resolving on the web yet, not even to placeholder pages, at least from where I’m sitting.

Because they’re Sunrise names, it’s possible that all four are defensive registrations that may never lead anywhere meaningful.

Richemont used Com Laude as its registrar while Rolex used Key-Systems.

The Sunrise was limited to Arabic-script trademarks.

dotShabaka said yesterday that it had “very few” Sunrise applications. Now we know that number was at least four.

.love dies as applicants pull five more new gTLD bids

Jewelry maker Richemont is the latest new gTLD applicant to withdraw one of its bids, yanking its application for .love.

The proposed gTLD was one of 14 single-registrant namespaces applied for by the company, and also the most heavily contested, with six other applicants competing.

Google, Donuts, TLDH and Uniregistry are also bidding. The string will almost certainly go to auction and may fetch a high price.

Richemont was the only applicant for .love as a “closed generic”, but the string was not among those listed in the Governmental Advisory Committee’s advice in the Beijing communique.

According to its application, Love is also a brand of bracelet produced by its Cartier jewelry business.

It’s the first application Richemont has withdrawn.

The New gTLD Application Tracker has also been updated today to reflect the withdrawals of .spa, .zulu, .free and .sale by Top Level Domain Holdings, which were announced last week but which ICANN has only just finished processing.

Microsoft, Yahoo and others involved in new dot-brand gTLD group

HSBC, Microsoft, Yahoo and jewelry maker Richemont have told ICANN they plan to form a new GNSO stakeholder group just for single-registrant gTLD registries.

The group would comprise dot-brand registries and — potentially — other types of single-user gTLD manager.

A letter (pdf) to ICANN chair Steve Crocker, signed by executives from the four companies, reads in part:

As a completely new type of contracted party, we do not have a home to represent our unique community. In addition, the existence of conflicts with other contracted parties makes it challenging for us to reside within their stakeholder group.

Combined, the companies have applied for about 30 single-registrant gTLDs, mostly corresponding to brands.

Richemont, which is applying for dot-brands including .cartier, is also applying for the keywords .jewelry and .watches as single-user spaces.

The group plans to discuss formalizing itself at the next ICANN meeting, in Toronto this October.

During the just-concluded Prague meeting, the GNSO’s existing registries stakeholder group accepted several new gTLD applicants — I believe mainly conventional registries — into the fold as observers.

How the influx of new gTLD registries will affect the GNSO’s structure was a hot topic for the Governmental Advisory Committee during the meeting too. I guess now it has some of the answers it was looking for.

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