A Warning Against Domain Operations that Facilitate Trademark Infringement
— Responsibilities and Decisions Expected of Domain Name Registrars —
1. The Fundamental Problem of Domain Name Abuse
Issues such as phishing websites and fraudulent online content are often discussed primarily in the context of personal data theft. In practice, however, many cases involve domain names that directly incorporate corporate trademarks and therefore constitute clear trademark infringement.
This is not a mere technical inconvenience. It is a serious infringement of intellectual property rights that directly undermines the goodwill and brand value that companies have built over many years.
Our firm has been continuously engaged in addressing such domain-based misconduct on behalf of victimized companies, including foreign clients, pursuant to formal instructions.
2. Are Registrars Truly “Neutral”?
Entities that register and manage domain names (hereinafter, “Registrars”) are generally regarded as neutral providers of internet infrastructure.
However, where a Registrar continues to provide and maintain a domain name despite being aware that it is being used for clear trademark infringement or fraudulent activities, its position may no longer be characterized as purely neutral.
From a legal perspective, such conduct may expose the Registrar to risks of being regarded as:
- facilitating unlawful acts, or
- contributing to the expansion of damages.
This is particularly true where the conduct in question constitutes trademark infringement under Japanese law and where corrective requests have been made repeatedly. In such circumstances, reliance solely on the argument of being a “technical service provider” may no longer be sufficient.
3. Responsibilities After Receiving Notice
Even in a cross-border internet environment, intellectual property rights under applicable national laws must be respected.
Once a Registrar receives a concrete notice supported by reasonable grounds indicating possible trademark infringement, it becomes necessary—not merely from an ethical standpoint but also as a matter of legal risk management—to consider appropriate measures, including:
- investigating the relevant facts,
- requesting clarification or corrective action from the registrant, and
- where appropriate, temporarily suspending the domain name.
Failure to take any action may be viewed as tolerating the continuation and expansion of harm.
4. Our Firm’s Position
Our firm places the highest priority on protecting the interests of victims affected by trademark infringement conducted through domain names.
Accordingly, we consistently adopt the following approach:
- clarifying infringement based on the Trademark Act and related laws;
- making reasonable and step-by-step requests for correction; and
- considering more decisive legal measures where infringement persists.
It should be emphasized that the purpose of these actions is not punishment, but the prompt cessation of infringement. Where appropriate measures are taken, the issue need not escalate further.
5. Conclusion: What Is Being Asked of Registrars
Registrars are not merely vendors of domain names. Their decisions can either prevent the spread of trademark infringement and fraud—or, conversely, allow such harm to continue.
What is now required of Registrars is:
- a careful assessment balancing business interests and legal risks, and
- a conscious commitment to maintaining a fair and secure internet environment.
As legal representatives of affected rights holders, our firm will continue to monitor developments closely and to take whatever legal actions may be necessary.