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Russian court practice on domain name and trademark disputes

Below you will find information on approaches of the Russian courts and tendencies of the Russian court practice in respect of the domain name disputes and alleged trademark infringements.

• The mainstream of court decisions in Russia in respect of the domain name - trademark disputes is the following. This is not the domain name itself that infringes upon trademark rights, but the content of the web-site (rarely courts decided otherwise, although it may happen). The content of the site (if any) is examined on the subject of containing information on identical or confusingly similar goods and services for which the complainant has a registered trademark. Therefore, claims of the complainant - trademark holder are likely to be dismissed by the court if there is no infringement of trademark rights in the corresponding classes of goods and services. This does not, however, prevent a trademark holder from raising other grounds to support his claim, such as unfair competition, for example.
  Passive holding of a domain name has been rarely addressed by the courts, so it is hard to draw any tendency yet. A lot will depend on the merits of the case and legal grounds chosen by the complainant to support his claim.
• As a rule Russian court examines whether there is any commercial use of the domain name in issue.
• To take over the domain name in a Russian court a complainant should prove that the domain name in issue is inevitably associated with the trademark holder or its use causes such associations, thus, owning the domain name by another person or legal entity will cause consumer's confusion as to the company, goods, services, sponsorship or affiliation.
• An attempt to attract visitors to the web-site under the domain name which consists of a trademark can be found a bad faith if it is the trademark itself which is used in the domain name and its popularity that draws the visitors.
• Owning several domain names by a trademark holder does not preclude him from taking over other domain names consisting of his trademark.
• If a holder of a trademark is deprived of doing business under his trademark in the Internet effectively, Russian court can find unfair competition under Russian law or Paris Convention and the domain name may be transferred to the trademark holder (rare early cases).
• Courts are inclined to recognize that the domain name identical to a registered trademark is the only way for the trademark holder to present himself in the Internet (rare early cases).
• There will be no infringement of trademark rights if the rights are exhausted in accordance with law (eg., goods have been duly put in the business by the trademark holder) (rare cases).
• In a case where both parties have rights to the name (trademark rights, rights to a company name or to a commercial name) some of the issues Russian courts resolve are: time priority of the rights (who was the first to gain rights in the domain name, trademark or other protected designations), the scopes of such rights (eg., whether a complainant and a respondent run business in different spheres of goods and services, its territory, etc.), how they came to use such names in their business, good faith in activity of the parties, decides the matter of actual and possible confusion among consumers. The main merits of the case courts consider here are: a) whether there is a direct infringement of a party's rights, b) whether there is an unfair competition, c) who and how came to possess the domain name in issue, and d) whether there is a real confusion among consumers (this is a burden of interested party to raise and prove this one).

These are more or less general conclusions that might be found in most cases, however, each case is unique and may be decided in a different way given all the merits of the case.

Be advised, litigation concerning domain name disputes in Russian court may take up to 4-5 years, although usually lasts less (1-2 years).