Will domain name registrars be liable for counterfeiting websites? This issue is raised before national jurisdictions.
The U.S Court of Appeals for the Ninth Circuit answered negatively to this issue. In this case, the Malaysian company PETRONAS requested the domain name registrar GoDaddy to cancel the domain names <petronastower.net> and <petronastowers.net> directing to pornographic websites. GoDaddy refused to act and Petronas brought an action on ground of cybersquatting against it. However, American legislation considers that a person can be condemned for cybersquatting if the latter registers or uses the domain name in bad faith. The trial court along with the Federal Court of Appeal has rationally dismissed the request of Petronas. They considered that “imposing liability on those who neither use the domain name nor show bad faith would undermine the purpose of the law”.
Nevertheless, the German court is not of that opinion. The Regional Court of Saarbrücken has indeed held the domain name registrar Key-Systems which administered the domain name <h33t.com> as liable. It resolved towards a website proposing free download of the album Blurred Lines by the singer Robin Thicke. Key-Systems argued the absence of its control of the website and thus, absence of its liability. Nonetheless, the court considered that the registrar has the obligation to examine the content of the website once it is notified. Moreover, according to the court, the registrar has the duty to take corrective action in case of obvious infringement of intellectual property rights.
The directive 2000/31/CE on e- commerce has settled these prompt obligations in case of obvious infringement. However, this obligation was never intended to extend on the domain name registrar. Also, the French jurisprudence puts forward that the technical provider does not have to stand in judgement of whether the infringement of obvious character or not (Cour de Cassation, civ. 1ère , 17 février 2011, n° 09-15.857).
The similarity between these two cases is the discussion concerning the liability of the registrar. A European harmonisation of the principle needs to be settled before the expansion of the new Top-Level domains.
Dreyfus & associés is specialised in online conflicts of intellectual property. Do not hesitate to contact us for further information.