District Court of The Hague, Decision of 21 August 2012, Breitling v. AltusHost

Breitling, Bulgari, Chanel and eight other luxury brand owners[1] obtained an injunction against an Internet Service Provider (ISP) that hosted 25 websites on which counterfeit watches were offered, including bestwatchonsale.com and breitlingwatches-replica.com. Neither the luxury brand owners nor the ISP are established in the Netherlands.

The District Court of The Hague, sitting as a preliminary judge, ordered the Internet Service Provider AltusHost to cease and desist from hosting the websites.

The brand owners were faced with the common difficulty that most of the 25 domains were either registered in the name of natural persons based in China, or registrants whose details were shielded through services such as Privacyprotect.org. Probably in view of this, the luxury brand owners turned to the ISP AltusHost.

This is a very rare - if not first ever - trademark case in the Netherlands in which an injunction is obtained against an ISP on the basis of Article 2.22(6) Benelux Treaty on Intellectual Property (BTIP). The usual route is to invoke Article 6:196c of the Dutch Civil Code, which essentially provides that an ISP is not liable if it promptly removes the unlawful material upon notification. It is unclear if this Article was invoked too.

Pursuant to Article 2.22(6) BTIP, a court may order an intermediary to cease and desist from its services that are used by third parties to infringe Benelux trademark rights.

AltusHost claimed as a defense that it could not be considered an intermediary within the meaning of this Article. The websites - which included Greek and Colombian top level domains - would not be aimed at the Netherlands / the Benelux.

The luxury brand owners challenged this defense, arguing that 1) the websites featured "the Netherlands" in the drop-down-list of countries to which products could be shipped, 2) payment in Euros was accepted and 3) the websites were in English, which would be generally understood in the Netherlands.

The District Court of The Hague followed the brand owners' reasoning and rejected the defense of the ISP.

Altus further claimed as a defense that the sought injunction would be disproportional, as it would not lead to the aimed purpose: the website owners would most probably transfer their websites to another ISP. The court also dismissed this defense in view of the steps that the brand owners had already taken against other ISPs, who nearly all had met the take down requests.

The decision demonstrates how trademark owners may be able to take action in the Netherlands against the international online sales of counterfeits, even if neither party is Dutch. In the case at issue, the circumstances that the website was in English and payment in Euros was accepted, helped construing a link with the Netherlands and enabled a claim on the basis of Article 2.22(6) BTIP. This not only resulted in a court order to block the access to the websites from the Benelux, but even in an injunction prohibiting the ISP from hosting the websites as such.