Home / News

Court OKs Private Seizure of Domain Names That Allegedly Sold Counterfeit Goods

Luxury brand Chanel has engaged in a fierce campaign against counterfeit websites in federal court in Nevada. It has seized approximately six hundred domain names in the last few months, reports Venkat Balasubramani. “I’m sympathetic to the “whack-a-mole” problem rights owners face, but this relief is just extraordinarily broad and is on shaky procedural grounds.”

By CircleID Reporter

CircleID’s internal staff reporting on news tips and developing stories. Do you have information the professional Internet community should be aware of? Contact us.

Visit Page

Filed Under

CircleID Newsletter The Weekly Wrap

More and more professionals are choosing to publish critical posts on CircleID from all corners of the Internet industry. If you find it hard to keep up daily, consider subscribing to our weekly digest. We will provide you a convenient summary report once a week sent directly to your inbox. It's a quick and easy read.

I make a point of reading CircleID. There is no getting around the utility of knowing what thoughtful people are thinking and saying about our industry.

VINTON CERF
Co-designer of the TCP/IP Protocols & the Architecture of the Internet

Comments

Horribly wrong Paul Keating  –  Dec 1, 2011 9:40 AM

This is a horrible decision which is not based upon the law but rather upon a court being subjected to the arguments and allegations of one side - the plaintiff.  That the other side did not show up is a shame but given the economic value of an individual domain (not to mention the location of the registrants in many cases) vs the costs of litigation in the US, it is unfortunately understandable.

The taking of the domain names is a remedy but not at the injunction stage.  There is no statute that provides support for such a pre-emptive solution, particularly with an intangible right as represented by a a domain name.  The process does allow for a plaintiff to obtain a judgment (requiring proof) and then to levy on that judgment if not satisfied.

I understand the “wack-a-mole” problem.  But how is this different in any manner than a flea market or E-bay issue?  One would not expect a court to order, at a preliminary injunction stage, that the plaintiff was entitled to the flea market location or the E-bay account.  Plaintiffs are quick to argue that the domain name problem is unique because anyone can set up a domain name.  How is that different than anything else?

I could park my car by the road, put up a sign for “cheap bags” and sell knock-offs.  Does this allow the plaintiff to the title to my car?  The factories that pump out knock-offs are largely those producing the real McCoy.  They are able to sell them anywhere they can obtain a buyer.  Will seizing domains at a preliminary injunction stage stop this?  No.  Those that wish to will simply get another domain, advertise to obtain traffic and continue to sell.  As said, this is no different from any other example.  There is no logical or legal basis for creating new rules just because it is “....the Internet!...”.  The same rules adopted in the “real world” should apply for the simple reason that they are there to prevent abuse by the plaintiff - they protect the minority and just as the rules applicable to the criminal system may be over-expansive in terms of protection of the defendant, so to are the rules applicable to the civil realm.  This is how it should be. 

The plaintiffs would no doubt argue that this will increase their costs.  Lets not forget that this entire exercise was to protect a government granted monopoly.  Having received the benefits of the monopoly, the TM holder should bear the burden of the costs.

The preclusion on the use of the domain name is something that could be ordered by the court.  The order can simply direct the registry NOT to allocate the domain name for registration.  Of course, this would require that the domain name itself be infringing - a situation not presented by the court action described above - where most of the domains were akin to “cheaphandbags.com” and were allegedly selling knock-offs.

Paul Keating

Comment Title:

  Notify me of follow-up comments

We encourage you to post comments and engage in discussions that advance this post through relevant opinion, anecdotes, links and data. If you see a comment that you believe is irrelevant or inappropriate, you can report it using the link at the end of each comment. Views expressed in the comments do not represent those of CircleID. For more information on our comment policy, see Codes of Conduct.

Related

Topics

IPv4 Markets

Sponsored byIPv4.Global

Domain Names

Sponsored byVerisign

Brand Protection

Sponsored byCSC

Threat Intelligence

Sponsored byWhoisXML API

Cybersecurity

Sponsored byVerisign