BREITLING, BULGARI, CHANEL, CHOPARD, DIOR, GUCCI, LONGINES, OMEGA, PANDORA, PATEK PHILIPPE and TAG HEUER are demanding before the District Court of The Hague that internet service provider AltusHost shut down a large number of websites. These sites offer ‘replicas’ or ‘fakes’ of products from these famous trade marks. The watch brands are arguing that AltusHost is acting unlawfully as an intermediary by hosting websites which it has been informed are committing acts of infringement. According to them, AltusHost can end the (transmission of the) websites with a press of a button and AltusHost is also required by law to do so. The District Court agreed with this argument.
The district court found that the holders of the domain names had been demanded via various ways to stop the infringing activities but had not responded (and in certain cases, fictional contact details had been provided). After that, the internet service provider (ISP) was demanded to suspend hosting of the websites and also to hand over personal details of the domain name holders.
AltusHost argued it was not an intermediary. As such what is claimed by the famous watch brands could not be awarded. However, AltusHost did not dispute that the Netherlands is designated on the websites as the country from which the products can be ordered and to which the products can be sent (via a so-called “drop down list”). Payment can also be made in euros and the websites are in English, a language which virtually everyone in the Netherlands with an internet connection can understand. In the sense of article 2.22 (3) and (6) Benelux Treaty of Intellectual Property, therefore, AltusHost is an intermediary whose services are being used for an infringement of the trade marks.
AltusHost furthermore argued that there are less drastic measures at hand than the cease and desist order being demanded against it as hosting provider. The trade mark holders could easily have the contested domain names suspended via ICANN by means of a procedure. The judge in interim relief proceedings found however that this procedure would not offer enough of a solution at present, on the one hand because ICANN does not concern itself with the content of websites but with the rightholder to the particular domain name and on the other hand because this procedure is undisputedly quite lengthy in nature.
AltusHost also argued that the trade mark holders have not made enough effort to directly sue the website holders and/or replica makers. Despite notices sent to the website holders, no response was ever received as of the date of the hearing however. The website holders whose name and address details are known are mostly from countries which are known for not taking very dynamic action against trade mark infringers. The judge in interim relief proceedings is therefore of the preliminary opinion that the requirement of subsidiarity has been satisfied.
AltusHost argued lastly that the order demanded is disproportional because it cannot result in the envisioned goal. The website holders could simply find another hosting provider for their websites. The judge found that this argument was based on the presumption that no additional measures would be taken by the trade mark holders. This presumption must be rejected, according to the judge. It was not contested during the hearing that the trade mark holders were already taking action against other hosting providers and almost all hosting providers, after being notified, were taking the particular websites offline. It was also stated – and not disputed – that half of the 6,000 clients of AltusHost reportedly trade in imitation products.
The order demanded, that the hosting of the websites be ceased, was awarded. This judgment shows that in the Netherlands ISP’s, under certain circumstances, can be ordered to shut down infringing websites quite easily.
Joost Becker
