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

Kevin Murphy, January 22, 2014, 21:54:49 (UTC), 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.

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Comments (4)

  1. Andrew says:
    January 23, 2014 at 11:06 am

    How did you get hold of the court documents Kevin?
    They are not published on the Nominet website – I doubt you got them from the court in a day?
    If Nominet gave them to you why did they want them out in the open?

    Reply
  2. David Taylor says:
    January 23, 2014 at 9:47 pm

    I am not aware of any Domain Name Registry Operator having been found to have intermediary liability to date.
    If Cartier ultimately succeed here, particularly as this is not a battle over domain names that include registered trade marks in the domain name, then it will be a very significant win for brands and an equally significant concern for Registry Operators across the globe who may then find themselves risking liability unless they take steps to ensure that the content available on the websites of generic domain names registered under their TLD do not infringe.
    But Domain Name Registry Operators are there essentially to provide accurate information as to who is behind the domain name. Provided the information they have is correct and they pass on that information when required to it is difficult to see where their liability lies.

    Reply
  3. Chris LaHatte says:
    January 29, 2014 at 1:50 am

    “new and obscure legal guideline, the “Practice Direction on Pre-Action Conduct”, that encourages people to settle their differences without resorting to the courts.”
    Actually well established law, that parties should try to discuss and mediate, and often with costs consequences if they do not.

    Reply

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