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RUSSIA:

VLADIMIR BIRIULINGORODISSKY & PARTNERS, Partner

Head of Legal Practice

Vladimir Biriulin

Partner

BEST PRACTICES FOR

DOMAIN NAME DISPUTES

IN RUSSIA

BRICS IP Forum - 2016

London November 21, 2016

DOMAIN NAMES LANDSCAPE IN RUSSIA

Russia -140 000 000 million people;

Big market with developed Internet-users audience (80,5 million users)

.RU domain zone – 5-th among the top-level national domains in the world as of2015;

5 040 278 .RU domains in 2015;

3,7 % growth for .RU domains in 2016 (180820 new .RU domains)

.РФ domain zone – holds the leading position among national alphabet domains;

There were 864 340.РФ domains in 2015;

3, 5 % growth for .РФ domains in 2015 (29159 new .РФ domains);

DOMAIN NAMES LANDSCAPE IN RUSSIA

Domain names are not treated as IP subject-matters;

Under the Russian Civil Code a domain name is among the means of addressing inwhich trademarks, firm names or commercial designations may be used;

Legal definition of the domain name in Russia as per the Information Protection Law -a symbolic identification designated for the website addressing on the Internet forthe purposes of accessing the information posted on the Internet

WHY DISPUTES?

Registration of a domain reproducing someone else’s trademark;

Unfair advertising;

Advertising of counterfeit goods

CHOOSING THE

APPROPRIATE

COURT VENUE

CHOOSING THE APPROPRIATE VENUE

UDRP proceedings are not available for .RU, .РФ and .SU domain names disputes;although UDRP principles are taken into account in the Russian judicial practice

Domain name disputes are heard by courts of general jurisdiction and commercialcourts

Commercial courts – disputes against individual entrepreneurs and legal entities

Courts of general jurisdiction – disputes against individuals

CHOOSING THE APPROPRIATE COURT VENUE

Two approaches in establishing the proper court venue:

a commercial court has jurisdiction over the trademark mark vs domain name disputesince the dispute is in fact commercial

OR

a court of general jurisdiction is competent over the trademark mark vs domain namedispute in all cases where the administrator is an individual

Strategy tip: in case the specific court of general jurisdiction considers that it has nojurisdiction of the domain name dispute due to commercial nature of the dispute evendespite the fact the defendant is an individual – the case will be under jurisdiction of thecommercial court

EVIDENCE PACKAGE

mandatory:

trademark certificate/registration (duly notarized and apostilled)

certificate of incorporation/certificate of good standing (duly notarized and apostilled)

registered trademark license agreement (for the exclusive licensee acting as a plaintiff)

extract or print-out from the register of legal persons (evidencing the defendant’s legal status)

official registrar’s statement (evidencing the valid domain name ownership vested with the defendant)

notary’s public protocol (evidencing the review of the domain name/web-site content)

owner’s cease and desist letter/take-down notice (evidencing the warning of the infringement) – mandatory in commercial court proceedings

facultative:

infringer’s offer for sale/letter of intent (evidencing the bad faith of the defendant)

public poll opinion (evidencing the likelihood of confusion and/or misrepresentation)

the witnesses’ opinions (evidencing the defendant’s bad faith and lack of legitimate interests)

documents of trademark/company name/trade name usage (evidencing the reputation of asserted IP)

other

PRE-TRIAL OPTIONS AND STEPS

Collecting evidence;

Cease and desist letter – mandatory for commercial proceedings (?);

Anonymous purchase

Out-of-court restrictions on use / transfer of the domain name – via the Coordination Center;

Preliminary injunction before filing court action;

REMEDIES AND CASE STUDIES

REMEDIES:

injunctive relief (preliminary/permanent)

domain name cancellation

domain name transfer

monetary relief (damages/monetary compensation)

publication of court order

REMEDIES AND CASE STUDIES

VW.RU:

domain names consisting of trademarks or company names have commercial value

the choice, registration and offering for sale of the infringing domain name is unfair competition

the use of the infringing domain name may tarnish the business reputation of IP owner

the use of a trademark in the domain name may be regarded as abuse of rights

lack of information on the web-page (‘passive holding’) is not a ground to avoid trademark liability

REMEDIES AND CASE STUDIES

SWATCH.RU

domain names may have the identification function as well as trademarks/company names

the domain name non-use (‘passive holding’)may attract customers and leads to unfair competition

the administration of the domain name containing the globally known trademark is trademark use

the limitation period does not apply to domain name disputes

the prompt and free domain name transfer in favor of the plaintiff is feasible

REMEDIES AND CASE STUDIES

MUMM.RU

Article 10bis of the Paris Convention enforces prohibition of unfair competition

international practice has worked out the rules related to domain name disputes

the defendant had no rights and legitimate interests in using the domain name and the web-site

the domain name transfer may confirm the lack of defendant’s intent to use the web-site/domain

the existence of the domain name in RU zone similar to the one in COM zone may mislead customers

the existence of the infringing domain name is abuse of the domain uniqueness

REMEDIES AND CASE STUDIES

NIKE.RU

the defendant owns 106 other domain names which were offered for sale on the Internet

the registration of the infringing domain name creates a threat of infringement of trademark rights

the defendant is an individual (physical person) and is not entitled to use a company name

the plaintiff’s trademark rights are well-known and may be enforced against non-similar goods

the defendant did not prove any rights or legitimate interests in respect of the litigious domain name

RESPONSIBILITY OF INTERNET PROVIDERS (ART.1253¹)

Internet provider is responsible for publishing information on the Internet

however

Internet provider is not responsible if:

He does not and should not have known that the use of relevant IP is infringement

He does not change the material during provision of communication services

He did not initiate and did not identify the recipient of information

Internet provider may only be obliged to take steps to stop infringement of IP rights

NEW GTLDS: PRACTICAL TIPS TO PROTECT THE BRAND

Emergence of new GTLD names in Russia

Constant monitoring of new domains

Sunrise, Landrush and General availability procedures

Use of UDRP and URS procedures

THANK YOU

FOR ATTENTION

LAW FIRM

GORODISSKY & PARTNERS

ph: (495) 937 6116

E-mail: PAT@gorodissky.ru

www.gorodissky.ru