Chanel wins US court case to de-list counterfeit sites

Concerned about counterfeiting, Chanel filed a joint suit in Nevada against over 600 domain names to seize the sites and a recent November 14 order went after an additional 228 sites.

Judge Kent Dawson, a federal judge in Nevada, agreed that the maker of the trademark Chanel perfumes can seize the domain names in question and transfer them all to US-based registrar GoDaddy, with the order to ensure none of the sites can be accessed.

‘De-index’ domain names​

The judge also ordered ‘all internet search engines’ and ‘all social media websites’ to ‘de-index’ the domain names and to remove them from any search results.

It does not appear at present that this had been fully carried out by search engines Google or Bing, although they were named as specific sites who should comply by Judge Dawson.

He specifically ordered Google, Bing, Yahoo, Facebook, Google+ and Twitter to remove any affected domain name from any search results pages.

He also specified that the sites in question have to stop using Chanel's name and images, and to stop selling any Chanel products.

The GoDaddy has been entrusted with linking the web addresses involved to a site outlining the case.

Not the first brand win this year​

The extraordinary step comes in a good year for luxury and consumer brands in the courtroom, after the EU Court of Justice ruled that eBay and others should play a more active role in stopping their sellers from trading in counterfeit L'Oréal goods.

The court said that websites such as eBay might be liable for trademark infringements if they played an "active role" in promoting fake goods.

The lawsuit was brought against eBay in the UK by the cosmetics giant, who complained that eBay was involved in trade mark infringements committed by users of its website.

Sites held accountable​

The French firm also stated that by purchasing paid internet referencing services, such as Google Adwords, eBay directed its users to products infringing the trade mark law.

With the EUCJ ruling in favour of L’Oréal, it means that online marketplace operators cannot turn a blind eye to the unauthorized sale of counterfeit products on their sites as they may now be held liable.

It now means that a website owner who facilitates or fails to stop the unauthorized sale of branded products via its website may also be guilty of infringing a trade mark owner's rights.