In such disputes, one of the main issues is the liability regime of numerous participants in e-commerce on the Internet (eCommerce): domain name registrars, website owners, hosting providers, online stores, and marketplaces. This article discusses specific issues related to holding offenders accountable for the sale of counterfeit goods on the Internet, as well as tactical aspects of combating such violations, ranging from classic claims to more sophisticated methods of holding third parties accountable.
A Claim and Lawsuit Against a Domain Administrator Is an Obvious and Effective Way To Protect Your Rights.
The sale of counterfeit goods, including fake fashion items, on the Internet is a violation of the copyright holder's exclusive rights. When a copyright holder discovers such a violation, they strive to stop it as soon as possible.
What Are Counterfeit Goods?
In accordance with Article 1252 of the Civil Code of the Russian Federation (CC RF), if the manufacture, distribution, or other use, as well as the import, transportation, or storage of tangible media that contain the result of intellectual activity or a means of individualization (such as a trade mark), results in the violation of the exclusive right to such a result or such a means, then such tangible media are considered counterfeit and, upon a court's decision, are subject to seizure and destruction without any compensation, unless otherwise specified in the CC RF.
The first task of the copyright holder is to identify the offender, i.e. the person to whom a claim can be made and subsequently a lawsuit. The most obvious victim in this case is the domain administrator.
Who Is a Domain Administrator?
A domain administrator is a person in whose name a domain name is registered. The domain administrator determines how the domain is used; is responsible for the choice of a domain name, possible violations of the rights of third parties associated with the choice and use of a domain name, and bears the risk of losses associated with such violations.
You can try to find out who the domain administrator is directly on the offender's website. If there is no such information there (predictably), you can find out who the domain administrator is on the registrar's website. The most well-known registrars for .RU and .RF domains are RU-CENTER and REG.RU, on the website of which you can try to find out the domain administrator. Try, because only information about legal entities is publicly available. If the domain administrator is an individual, then you can find out data about such a person by sending a lawyer's request to the registrar.
What to do when the offender's website is registered in foreign domains? Searching for an offender should start with such services as WHOIS.NET and GoDaddy WHOIS Lookup. There you will be able to find out basic information about the domain administrator and its registrar, in respect of which you can send a request for additional information regarding the domain administrator.
Once such a person is identified, the next step is to prepare and send a claim to him demanding that he cease and desist from violating his exclusive rights ("cease and desist letter"). In such a claim, the copyright holder should, at a minimum, state the facts of the violation, provide evidence of the existence of exclusive rights and inform about his intention to fight the violation in court.
If such claims always achieved the desired result, then this would be the end of the matter. However, this is not the case. Moreover, sometimes the rightholder is aware in advance of the futility of submitting such a claim, in which case it may be more tactically sound to immediately proceed to other methods of protecting their rights. However, it is important to remember that the infringer will still have to submit a claim before going to court, as the claim procedure for resolving disputes has recently become mandatory.
If the domain administrator ignores the claim or it is not possible to establish their identity, the copyright holder may file a claim with other members of the infrastructure.
It Is Always Possible To Find out Who the Domain Registrar Is
If it is not possible to find out who the domain administrator is, then it is always possible to find out who the domain registrar is. It is to his address that it is worth sending a claim if the search for the administrator did not bring any results.
Who Is a Domain Registrar?
A registrar is a legal entity accredited to provide users with services for entering information about a domain name (its administrator) in the database of domains RU (RF). Accreditation is carried out by the Coordination Center for the National Domain of the Internet, on the website of which you can find a list of accredited registrars, which include such major domain registrars as RU-CENTER and REG.RU.
It would seem that what is the domain registrar responsible for, if it has nothing to do with the content of the site and does not take part in its management?
The possibility of bringing third parties to justice was finally established with the introduction of the institution of "information intermediaries" in Russian legislation in August 2013, which includes a wide range of eCommerce market participants. Previously, a person who was not the direct perpetrator was almost always exempt from liability, but now they can only be exempt under specific conditions. Who are the information intermediaries?
Information intermediary
A person who transmits material on an information and telecommunications network, including the Internet. Example: a telecommunications operator.
A person who provides the opportunity to host material or information necessary for its retrieval using an information and telecommunications network. Example: a registrar or hosting provider.
A person who provides access to the material on this network. Example: a website, a torrent, a forum.
According to the latest court practice, the registrar is recognized as such an intermediary and can be released from liability only if the following conditions are met: (1) the registrar was not aware of the violation and should not have been aware of it; and (2) the registrar took timely and necessary measures to stop the violation if the copyright holder made a written claim. In practice, these rules allow registrars to conduct appropriate checks, provide information about the domain owner, and possibly even block access to the domain.
The Metallurgical Plant's Website Was Duplicated
The plant filed a lawsuit against the alleged infringer and the REG.RU domain registrar at the same time, as the plant's websites were duplicated and the copyright and trade mark rights were violated. The lower courts dismissed the claim against the registrar. However, the Court of Intellectual Property reversed the lower courts' decisions, stating that the registrar could be held liable if the above conditions were not met.
In addition to registrars, information intermediaries are also recognized, for example, hosting providers and website builders. Accordingly, they are also required to take timely measures in the event of claims from copyright holders.
The Website Builder Is Responsible for the Pages Created on Its Basis
In 2014, the Arbitration Court of St. Petersburg and the Leningrad Region awarded 100,000 rubles in compensation to a cosmetics brand from a website builder due to the fact that one of the builder's users created a page on its basis that violated the brand's rights. The higher courts overturned the decision, citing the fact that the website builder had timely notified the user of the claim and blocked the website.
Thus, when the website owner is out of reach, an effective tactic for combating the distribution of counterfeit products is to file claims and lawsuits against information intermediaries. Recently, such intermediaries have been held accountable if they have not taken necessary and sufficient measures to stop the infringement upon receiving a written claim from the copyright holder.
If a Counterfeit Product Is Sold on a Marketplace, You Should Contact the Marketplace Organizer Directly With a Claim.
If a fake product is for sale on a marketplace, such as Avito, Ozon, or AliExpress, you should first contact the administration of these marketplaces with a claim. Each marketplace has a policy that requires sellers to comply with legal requirements, including the protection of intellectual property rights.
Gucci v. Alibaba
Fashion conglomerate Kering, which includes brands such as Gucci, Balenciaga, Yves Saint Laurent, etc., filed several lawsuits in the Southern District Court of New York against the Chinese online giant Alibaba. One of the lawsuits claimed that Alibaba had colluded with a group of sellers and fraudulently promoted counterfeit Gucci bags for $18.99, while the genuine model cost more than a thousand dollars. The claim for conspiracy and fraud was dismissed, but the claim for infringement of exclusive rights is still pending.
Express Blocking of Websites That Violate Copyright
The procedure described above applies to all cases of intellectual property infringement on the Internet, especially violations of trade mark rights (the sale of counterfeit fashion products). The law also provides special mechanisms for combating copyright infringement, which protects creative works. The relevant provisions are contained in the Federal Law "On Information, Information Technologies, and Information Protection".
Thus, the copyright holder or licensee has the right to contact the website owner with a claim of copyright infringement, which the website owner is required by law to respond to within 24 hours.
Even in this case, the claim may be left unanswered, and the law provides for an expedited procedure for blocking the website. To do this, the copyright holder can file a claim with the Moscow City Court for preliminary protective measures to protect their copyrights. The court considers such a statement on the day it is received, without notifying the defendant, and issues a ruling. Within 24 hours, the ruling is sent to Roskomnadzor, which in turn sends it to the telecom operators, who are required to restrict access to the website within 24 hours. The website will be automatically unblocked if the applicant does not file a full-fledged lawsuit against the offender within 15 days.
The disadvantage of this procedure in the context of the fashion industry is that the express website blocking regime does not apply to copyright violations of photographs and works obtained through methods similar to photography. However, copyright-protected works include video materials (including commercials and show cuts), literary works (articles and reports), and designs.
Enforcing Third-Party Liability as a Powerful Tactic To Combat Violations of Exclusive Rights
As an additional tactic to combat intellectual property violations on the Internet, copyright holders can use a recently introduced legal provision.
Third-party liability
In the event that one violation of an exclusive right [...] is committed by the actions of several persons jointly, such persons are jointly liable to the copyright holder (clause 6.1 of Article 1252 of the Civil Code of the Russian Federation).
In the case of joint liability [responsibility] of debtors, the creditor has the right to demand performance from all debtors jointly, as well as from any of them individually, both in full and in part of the debt (Article 323 of the Civil Code of the Russian Federation).
In other words, with the introduction of this rule in 2014, it became possible to hold a person liable who was only indirectly involved in the infringement of exclusive rights. In this case, the joint debtor can be held fully liable.
This rule is similar in logic to the provisions on information intermediaries, but it is not limited to the world of information technology and allows the copyright holder to target other classic intermediaries in the market chain. For example: (a) warehouses where counterfeit goods are stored, (b) payment services that accept payments for goods, and (c) advertisers who place their ads on the infringer's website, indirectly financing the infringer's activities.
It should be noted that the examples provided in the previous paragraph are based on foreign practices where the provisions on joint liability for violations of exclusive rights have already been applied in courts. In Russia, the institution of joint liability for violations of exclusive rights is still in the process of development and interpretation. This, however, does not deprive the copyright holders of the opportunity to try to influence the third parties who have contributed to the violation of their rights. This tactic may be especially justified when it is difficult to identify the infringer, or when the assets that can be seized are of no commercial value or are unreachable.
The above describes only certain aspects of the fight against counterfeiting on the Internet. With the development of eCommerce, this area of law is becoming increasingly important, and new situations are emerging regularly. Companies should actively monitor the compliance with their intellectual property rights, including in the online world, especially since Russian law has developed effective tools in recent years. The choice of specific tactics depends on the circumstances of the case, the scale of the violation, and the desired goals. In some cases, the violation can be effectively addressed by issuing a claim, while in others, only going to court and recovering damages can restore the violated rights.