Access blocking, operators

Trademark law, Image rights: Block undesirable sites

by Cabinet Roquefeuil | Jan 28, 2021

Internet service providers (ISPs), such as Orange, Bouygues, etc., may be ordered, according to a short judicial circuit, to block domain names, in order to stop the exploitation, in France, of the image or the brand used on the website carried by the domain name in question.

Two decisions on this subject:

Court of Justice of Paris, January 8, 2020, n°19/58624

High Court of Paris, 3rd chamber 4th section judgment in the form of summary proceedings, March 7, 2019, n°18/14194

The request can be made on the basis of article 6.I.8 of the law for confidence in the digital economy of June 21, 2004 (known as "LCEN"), transposing the directive of June 8, 2000 (2000/31 /EC) on electronic commerce.

The judicial authority may prescribe in summary proceedings or on request, to any person mentioned in 2 or, failing that, to any person mentioned in 1, all measures to prevent damage or to put an end to damage caused by the content of a online public communication service (version before 2021 reform)

This text therefore provides for the possibility of requesting technical intermediaries to intervene on harmful content posted online, failing action by the publisher himself, and in a certain order: first the host, failing that the ISP.

This legal provision is used with other rules such as those aimed at penalizing counterfeits (directive of April 24, 2004 (2004/48/EC) on intellectual property rights, transposed to article L716-6 of the intellectual property, today article L 716-4-6 of the intellectual property code). “..these are two distinct schemes in their nature, their methods and their objectives”.

Art. L. 716-4-6 CPI covers infringements of intellectual property rights:

Any person with standing to sue for infringement may apply for interim measures to the competent civil court in order to have ordered, if necessary under penalty, against the alleged infringer or the intermediaries whose services he uses, any measure intended to prevent an imminent infringement. to the rights conferred by the title or to prevent the prosecution of alleged acts of infringement. (…)

European Directive 2000/31/EC, recital n°45 states that “the limitations of liability of intermediary service providers provided for in this Directive are without prejudice to the possibility of injunctions of various types. Such injunctions may in particular take the form of decisions by courts or administrative authorities requiring that any violation be put to an end or that any violation be prevented, including by removing the unlawful information or by making the access to them impossible.”

Directive 2004/48/EC, recital 23, says that “without prejudice to any other existing measure, procedure or remedy, rightholders should have the possibility of seeking an injunction against an intermediary whose services are used by a third party to infringe the holder's industrial property right.”

Blocking and seizure of domain names

Consult a trademark lawyer

Domain name disputes, blocking and seizure of domain names

by Cabinet Roquefeuil | Jan 15, 2021

It is easy in principle to reserve a domain name as soon as it is available in a given extension (.com, etc.) except that said extension (known as TLD for Top Level Domain) obeys an allocation regime. restrictive and special (e.g. .eu is reserved for nationals of the European Union). First come, first served.

However, it can be challenged if it infringes trademark rights or other protectable interests.

It can also be opposed (subject to presentation of good evidence and convincing demonstration!) to a domain name, a trade name, a brand, dedicated to similar activities.

This dispute is exercised within the framework of legal proceedings or, if the elements are obvious, of dedicated arbitration proceedings such as UDPR or URS before the World Intellectual Property Organization.

The disputed domain names can thus be transferred or suspended, blocked. Injunctions will be issued to reservers, registrars, hosts, internet service providers.

Domain name blocking supporting illicit activities

Moreover, the domain name being the support of sites, its blocking does not prevent the illicit activity on the site which can be transported elsewhere on another domain name. But the site will lose the referencing associated with the old domain name. Procedures do exist, however, to ask internet service providers to block domain names supporting illegal activities, and to quickly sanction the reappearance of sites.

The domain name is a seizable asset

Can the blocking measure be used for a measure of seizure and sale of the domain name to force the debtor holding the domain name to pay his debt, or as a confiscation in criminal matters? Under such a procedure, the domain name would be put up for sale and transferred to a third party.

Difficulties:

What if the domain name allocation authority was based abroad?
The person seized may possibly complain of the loss of dereferencing, if the domain name is sold at a low price. The domain name can indeed be the support of an important effort of referencing on the Internet or communication in general, and have more value than it seems. The threat of blocking should therefore encourage the debtor to pay.

Block an unwanted site

Be accompanied by a trademark lawyer