RUSSIAN DOMAINS
from exercising its rights to the trademark Mumm and prevented it from registering its trademark as a domain name in the Russian segment of the Internet, thus limiting the company’s commercial activity in Russia.
Te Ninth Appellation Arbitrazh Court reversed the decision of the court of first instance and sustained the arguments of the plaintiff. Te Federal Arbitrazh Court of the Moscow District then overruled the decision of
the Ninth
Appellation Arbitrazh Court and upheld the decision of the first instance, stating that using a name identical to a trademark for an ‘empty’ website should not be deemed as infringing exclusive rights to a trademark.
Te Supreme Arbitrazh Court, which accepted the plaintiff’s request for a supervisory review, transferred the case
to its presidium for
consideration. Te presidium ruled in favour of
the claimant, enjoining the defendant from
using the plaintiff’s trademark Mumm in the domain name. Sustaining the claim, it referred inter alia to Article 10 bis of the Paris Convention for the Protection of Industrial Property which defines an act of unfair competition as “any act of competition contrary to honest practices in industrial or commercial matters”.
Te presidium also stated that this conclusion corresponds with its position specified in its decision on case No.5560/80, dated November 11, 2008. In this case Denso Corporation, a Japan- domiciled manufacturer of electrical equipment, had been trying for years to defend its right to
denso.com from an unfair registrant: the Russian company, DenSo. Te problems began in the spring of 2000, when the name was registered by a US company called Denso Domain, which then
“USE OF A
DOMAIN NAME WAS ACTIONABLE ONLY IF A DOMAIN NAME CONTAINING A TRADEMARK BELONGED TO AN ACTIVE WEBSITE DEALING WITH GOODS/SERVICES COVERED BY THE TRADEMARK’S REGISTRATION.”
used in bad faith. Te Supreme Arbitrazh Court commented that courts should take a broader approach to domain name disputes and apply criteria established by the UDRP.
In the absence of administrative or quasi-arbitral procedures for domain name disputes in Russia (such as the UDRP), Russian Arbitrazh courts remain the sole practical tool
for resolving
domain name disputes in the Russian TLDs, if the parties do not wish, or are not able, to come to an amicable solution. Te Mumm case is very important since not only has it changed a troubling trend in domain disputes in Russia, but it has also created guidelines for lower-level courts on how to address instances of cybersquatting where a domain name is not linked to an active website.
transferred ownership to a Russian consultancy company, also named DenSo, in the same year. A year later, DenSo handed the right to use the domain to another company, Servicepoint, which took over administration of the domain.
Denso Corporation filed a UDRP complaint with the WIPO Mediation and Arbitration Center. On November 13, 2003, the centre ruled that Russian DenSo had acted in bad faith. However, Russian DenSo filed a lawsuit against the Japanese Denso Corporation, demanding recognition of the Russian DenSo’s right to use the
denso.com domain name. On February 2, 2007, the Arbitratzh Court of St Petersburg and the Leningrad Region turned down the lawsuit, but that ruling was overturned in courts of appeal of two levels. Te final ruling came from the Supreme Arbitrazh Court reinstating the first ruling and citing the fact that Russia, as a participant in the WIPO, must take into account international practice in dispute resolution as formed by the organisation.
Denis Khabarov is heading the IP litigation and enforcement sub-division of Baker & McKenzie’s intellectual property practice group in Moscow. He specialises in intellectual property and dispute resolution, including general IP advice and IP enforcement, arbitration and litigation. Khabarov is a member of the Moscow City Bar, INTA and IACC.
Te Supreme Arbitrazh Court in both cases specified that while determining whether there is an act of unfair competition, prohibited by Article 10 bis of the Paris Convention, in the actions of a domain administrator, the courts should examine three criteria established by the UDRP. Tese are: (i) whether the domain name is identical or confusingly similar to the trademark of a third party; (ii) whether the owner of the domain name has legitimate rights and interests in the domain name; and (iii) whether the domain name is being
46 Trademarks Brands and the Internet Volume 1, Issue 2
Although the Russian legal system is not a case law system, this ruling of the Higher Arbitrazh Court of Russia is very important for domain name recuperation disputes in Russia. Te ruling of the presidium of the Supreme Arbitrazh Court has offered a broader interpretation of the Civil Code and increased the chances of trademark owners being protected against cybersquatters.
Denis Khabarov is a partner at Baker & McKenzie. He can be contacted at:
denis.khabarov@
bakermckenzie.com
Alisa Fomina is a professional support lawyer at Baker & McKenzie. She can be contacted at:
alisa.fomina@
bakermckenzie.com
Alisa Fomina is a professional support lawyer
at CIS Baker & McKenzie’s
intellectual property practice group. She specialises in intellectual property, with an emphasis on copyright and related rights.
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68