Russian domain name disputes

In March 2024, Russian IP court adopted “Recommendations of the Scientific Advisory Council regarding suppression of infringement of exclusive rights”). The “Recommendations” reflected the following domain-related trends.

1. Is it permissible to oblige the defendant to transfer the right to administer the disputed domain name to the right holder as a measure of protection of the trademark exclusive right in case of its unlawful use by the defendant in  Russian top-level domain names of .ru or .рф ?

Illegal use of a trademark in a domain name occurs:

1) use of a domain name identical or confusingly similar to a trademark in respect of similar goods or services and

2) registration of a domain name itself, i.e. registration of a domain name identical or confusingly similar to a well-known trademark. The use of such domain name may also be recognized as an act of unfair competition.

In the first case, the demand to stop the infringement may be in the form of a demand to prohibit the use of the domain name in a certain manner, for example, an obligation to remove information about specific types of goods on the relevant site.

In the second case, the court may satisfy the demand to cancel the registration of the domain name ( Para 158 of the Decree No. 10).

In case of cancellation of registration of a domain name in the .ru or .рф zones on the basis of a judicial act, a claim for transfer of the right to a domain name is an alternative to a claim for cancellation of the domain name accompanied by re-registration of the domain name in the name of the right holder. In other words, the right holder is entitled to register the disputed domain name for himself or the right holder may initially make a claim to the court for the transfer of the right to administer the domain name. The demand to transfer the right to administer the domain name as a way to suppress infringement is allowed in cases where the domain registration itself is recognized as infringement.

This can be exemplified by judgment of IP court No C01-1172/2023 of October 11, 2023:

Claim: Recognize registration and administration of a domain name as an act of unfair competition, prohibit the use of the disputed designation in the domain name and transfer the right to administer the domain.

The claim was satisfied, as the defendant had no rights to the domain name, he did not provide evidence showing that he was the owner of an identical or similar trademark, or showing that the domain name was his company name.

2. If a claim to stop domain infringement is submitted against the domain name registrar, would that be sufficient to involve the domain administrator as a third party that does not make independent claims regarding the subject matter of the dispute, or should the court invite the plaintiff to involve the domain administrator as a co-defendant/second defendant? Should the claim for stopping the infringement be brought against the domain name administrator first and only secondarily against the registrar?

According to Article 1252 of the Civil Code, a claim to stop infringement or threat of infringement should be brought against a person committing those actions or making necessary preparations for them, as well as against other persons that can stop those actions. In this regard, if the claim to stop the infringement is brought against the registrar, the commercial court shall involve the domain name administrator in the case as a co-defendant at the request of the parties or with the consent of the plaintiff. A claim for termination of the domain infringement brought against the registrar may be satisfied only if the registrar together with the administrator committed infringement during domain name registration; for example, there were coordinated actions of the registrar and the administrator to register a domain name.

Thus, a claim to stop the infringement should first of all be brought against the administrator as a person responsible for the choice of the domain name, and, in the absence of the possibility to identify the domain name administrator - against the registrar as the person who has technical means to stop the infringement.

The same approach was applied in the judgment of IP court No C01-298/2022 of April 14, 2022.

The claim was to stop illegal use of a trade name and trademarks by terminating the delegation of the domain name.

The claim against the registrar was dismissed, as the claim was brought against a wrong defendant. Responsibility for the use of the domain name, including the information located on the site, shall be borne by the administrator of the domain name.

3. Can a claim for termination of a domain name delegation be brought against the registrar; and, if there are grounds, satisfied, in case of domain name infringement or unauthorized use of intellectual property on a website in the absence of the domain infringement? Can preventive measures, e.g. a request for termination of the domain delegation be of temporary nature?

According to Clause 1.1 of the Domain Name Registration Policy for .RU and .РФ domains, domain delegation means placement and storage of information about the domain name and its corresponding DNS servers on the DNS servers of the top-level domain, which is a necessary condition for the functioning of the domain addressing on the Internet.

The registrar may terminate delegation of a domain name not only on the basis of a judicial act, but also in other cases given in the Registration Policy, in particular, in case of finding inaccurate information about the administrator in the Registry or in case of the administrator's failure to provide documents confirming this information at the Registrar's request.

A claim for termination of the domain name delegation as an independent claim and as a measure to stop the infringement cannot be satisfied, because it does not lead to complete cessation of the domain and website infringement. Besides, the registrar, as a general rule, is a wrong defendant in a claim for termination of the infringement.

At the same time, this claim may be filed with the court as an interim injunction claim.

At the request of a party, and at the request of another person, commercial court may take urgent temporary measures aimed at securing the claim or securing the property interests (interim injunctions) ( Article 90 of the CPC RF).

Interim injunctions are allowed at any stage of the proceedings if the failure to take these measures may make it difficult or impossible to enforce a judicial act, including if the execution of the judicial act is expected outside of the Russia, as well as in order to prevent significant damage to the claimant.

Interim injunction may include the obligation to perform certain actions not only by the defendant, but also by third parties. In this regard, an interim injunction to termination domain name delegation may be imposed on the registrar even if he is not a defendant. Interim injunctions must be proportionate to the claim.