The case: Several major international scientific publishers discovered that illegal copies of their works were being published on certain websites.
The operators of the websites were anonymous and could not be identified.
The publishers were able to establish that the websites were stored on a server in Sweden, among other places. The publishers informed the host provider in Sweden about the infringement and asked them to shut down the web pages on their server. However, they did not even receive a reply.
The publishers then turned to Deutsche Telekom, one of the largest internet providers in Germany, and which provides the end user’s access to the internet.
The publishers demanded Deutsche Telekom carry out a so-called DNS block. To enable this, Telekom only had to manipulate the conversion of the domain name into an internet-enabled IP address on its DNS server. If an internet user then were to enter the domain name of one of the websites in question into their browser, Telekom’s DNS server would forward false a IP address to the network, meaning that the websites could no longer be found.
Telekom, however, refused to carry out the DNS block. It said it was not responsible for the fact that the websites could be accessed via its access points. Moreover, the requested DNS block would not be suitable to eliminate the infringement, since the illegal websites remained active on the internet and could still be accessed via other domain names or by entering their IP address directly into the browser. This meant the publishers would have to take action primarily against the Swedish host provider on whose server the websites were located in order to uncover those behind the infringement.
Was Deutsche Telekom correct in its opinion?
The publishers argued that action against the host provider had already failed. In piracy cases, one host provider is often simply changed for another. In addition, illegal websites were sometimes hosted by so-called ‘bullet-proof’ providers who specialised in illegal websites and defended themselves stringently against all takedown attempts.
In Germany, the Telemedia Act, based on a European regulation, can be a means to make a claim to establish blocking measures against providers of internet access, such as Deutsche Telekom. These blocking measures can also consist of a DNS block. However, they are only a last resort. All reasonable measures that do not lead to disproportionate delays must have already failed or been classed as futile beforehand.
The publishers’ demand failed because of this.
The publishers could have obtained an interim injunction in Germany against the Swedish host provider, requiring third-party information. This injunction is issued at short notice, and it can be easily enforced in Sweden according to the rules of the European Union. The Swedish host provider could have been forced to disclose the names and addresses of the website operators within days. The publishers could then have taken further action against these operators and stopped the infringement. A DNS block was therefore not necessary.
The claim for a DNS block to be carried out by Deutsche Telekom was rejected.
Federal Supreme Court (BGH) of 13. 10. 2022, I ZR 111/21
Learnings: If you are considering blocking domain names by way of a DNS block in order to defend against trade mark-infringing websites, you must first have carried out all reasonable measures to pursue the infringement that are not too time-consuming. An interim injunction requesting third-party information, in Germany against the host provider located abroad, may be a relevant and successful defensive measure in this regard.