Russian court practice on domain name and trademark disputes
Below you will find a short review of the Russian court practice in respect of the domain name disputes and alleged trademark infringements.
The mainstream of court decisions in Russia, developed through time and under effect of cyber squatters' actions, reveals a tangible bias in favor for protection of trademarks and company names, as well as courts are extending the rights thereto beyond the limits established by the Russian law. This makes the life of right holders much easier, but, at the same time, domain name owners acting in good faith can also become a victim of such biased approach.
There is a good chance of winning the domain name through court at any of the following circumstances:
- the domain name is not used (not delegated) and resolve to no web-site at all, so called passive holding of a domain name;
- the domain name is used non-commercially ("about" web-sites, forums, etc.),
- the domain name is used in respect of goods or services which are not protected by the complainant's trademark registration,
- the domain name is used by a dealer or reseller, only in respect of legally bought goods produced by the trademark holder and allowed for sale in Russia and only in respect of such goods (no goods of trademark holder competitors are offered at the web-site under the disputable domain name).
The said remains true even if the trademark is a generic word, though with the qualified defense in a court and under right circumstances the domain name owner increases his chances to keep the domain name and win the case.
Moreover, should some circumstances be present, there is a good chance of winning a domain name which was registered even before the trademark priority.
Domain names are not considered to be an asset, an object of civil rights in domain name disputes (which is a curious point, considering that courts do recognize validity of domain name lease agreements, but not in dispute between a domain name owner and a trademark holder).
Thus, only obvious and formally and documentary supported legal interest could make a reliable and sound defense for the domain name owner in a domain name dispute.
This is important to consider for trademark holders as well as for domain name owners.
For instance, if the domain is "your trademark".ru and the domain name owner won't be able to prove his interest with another trademark registration and good faith, then regardless the way he uses the domain name most likely he would lose it.
These approaches are not implemented in all of 100% cases. These are general approaches we draw conclusions on as a result of analyze of our own domain name disputes experience and whole court practice.
A legal representative plays a great role in domain name litigation, especially when the merits of the case are not indubitable and crystal clear.
Trademark law is not an only weapon to fight domain name owners, a right to a company name, law on unfair competition and even a rule against right abuse (meaning a right of a domain name owner to register a domain name), especially used in combination could be crushing, indeed.
And this should not be ignored neither by those who intend to take over a domain name alluding to a right in a brand, nor by the domain name owners.
Strength of our client is in that our lawyers know the weaknesses and flaws in Russian laws, nuances and approaches in domain name disputes, which, along with the individual approach, effectiveness and reliability our law firm offers, allows to predict an outcome of a dispute and get the most out of it for the client.