Domain name dispute resolution practice

Domain names tend to be effective branding resources accessible in cyberspace. Though domain
names aren't handled purely as IP subject matter, they're functioning as internet business source
identifiers simply by helping various companies to accomplish e-commerce and market their own
brands about the internet. in practice, domain names obtain the status of digital trade marks that
will serve to identify your activities of companies and/or distinguish their goods/services in several
segments with the market.

While the particular procedure regarding website name registration might seem to be fairly easy,
the particular domain name existence could often be from risk, particularly each period a certain
url of your website overlaps with standard IP rights (such as trade marks) of a third party.
Because the result, almost every such conflict will inevitably result in a new dispute resolution
procedure involving national and international ideas involving law/practice. And, in many
situations, your website name dispute will be topic to the jurisdiction in the Russian Federation
(Russia), which provides to find a strong and effective system regarding domain name litigation.
Domain fundamentals
In Russia, you can find quite a few laws and regulations providing for the definition of your domain
name. Specifically, from your internet-related standpoint, any website name shall be thought for
you to be a symbolic identification designated for the network addressing where the domain name
product is used (Section 1.1 in the Terms for Website Name Registration inside .RU and also .
Domains successful as associated with 12 November 2013 (version dated 20 September 2012)).
Through the actual information technologies perspective, the url of one's website shall become
considered as a symbolic identification designated for the site addressing around the web for that
purposes involving accessing the data on the internet (Article two (15) of the Russian Federal Law
no 149-FZ dated July 27 2006 "On Information, information Technologies as well as Info
Protection"). Finally, in the IP-related context, a new url of your website will be deemed the mode
of addressing on the web (Article 1484 (2)(5) of the Russian Civil Code, Portion IV, successful as of
January 1 2008). Hence, when reviewing these definitions, it gets distinct in which a new url of
one's website is surely an IT asset that will represents an individual type of LayerOnline
website/data addressing about the internet.

While the era of recent generic top-level domains (gTLDs) is becoming implemented below your
aegis associated with World wide web Corporation for Assigned Names and also Figures (ICANN),
and any few innovative Cyrillic strings get been recently launched and delegated (such as .
(.online), and . (.site)), you will find a couple of standard domain names in Russia, that should not
be disregarded, such as the national domains (ccTLDs), as well since the geographical strings,
furthermore referred to always be able to as geo-domains (such as .msk.ru, .spb.ru, .sochi.su), and
other domains (such as .com.ru, .org.ru, .net.ru, .pp.ru). Within terms of your range of
registrations, probably your most popular would be the next national ccTLDs: (i) .ru, (ii) . along
with (iii) .su. Therefore, from a practical standpoint, many local domain name disputes are usually
arising out of or even beneath these particular Russian ccTLDs.

IP issues
Domain conflicts typically happen due to unauthorised registration and employ regarding domain
names identical or similar to trade marks and/or organization names. Importantly, such trade
marks as well as company names must enjoy legal protection within Russia in order to be
enforced. Inside other words, the trade mark owner shall use a valid cause of motion against
unauthorised domain name registration/use in the event its trade mark legal rights have been duly
registered within Russia around the national trade mark application level, or even extended in
order to Russia by means of an international trade mark registration. With the identical time, a
business title owner will possess a valid trigger of motion against unauthorised url of your website
registration/use whether its company name has been registered with just about all the so-called
Uniform State Register regarding Legal Entities (the neighborhood registry involving companies)
for domestic companies, or by simply operation in the applicable rule stated within Article 8 of the
Paris Convention (without additional neighborhood registration of a company) with regard to
foreign companies.

A foreign organization identify features to become famous among the relevant clients around the
Russian marketplace as well as actively utilized in Russian commerce being asserted inside the url
of one's website infringement claim. An unregistered mark, unless it has acquired the special wellknown status assigned from the Russian Patent along with Trademark office (RUPTO), is certainly
not likely to end up being enforceable against any unauthorised url of your website
registration/use. common law rights, or even the legal rights merely based around the use as well
as popularity of the brand throughout commerce, usually tend to be not usually recognised in
Russia. Hence, url of your website actions may have to be brought beneath the actual claims of
trade mark and/or company identify proprietors whose IP (exclusive) legal rights are usually duly
protected and valid throughout Russia.
UDRP principles
One important distinction of the local domain name dispute resolution practice is usually that your
Uniform Website Name Dispute Resolution Policy (UDRP) will not apply to Russian ccTLDs, geodomains along along with other Russian (third-level) domain names. Also, there are no
administrative as well as arbitration proceedings (similar in order to UDRP) obtainable below
national laws for you to recapture the actual Russian domain name. Therefore, judicial proceedings
(civil action) remain the only real feasible enforcement alternative to get a manufacturer owner in
order to retrieve the infringing domain name, unless the particular manufacturer owner features
stood a opportunity to stop infringement and acquire the conflicting domain name inside a nonjudicial manner (such as under the cease and also desist letter).
"In many situations, your url of your website dispute will be topic towards the jurisdiction of the
Russian Federation, which gives for a strong along with efficient system of website name
litigation"
In regards to practice, Russian courts do recognise the three-factor test as offered through the
UDRP and can enforce the transfer in the litigious website name throughout favour involving the
claimant, if the latter is actually in the situation to show that: (1) the conflicting website name will
be identical or confusingly comparable to a trade mark in which the actual claimant has rights; (2)
the respondent provides simply no legal rights or reputable pursuits throughout respect of the
actual conflicting domain name; and (3) the actual respondent's domain title continues in order to

be registered and it is becoming found in poor faith. Hence, these basic UDRP principles are
extensively utilized by trade mark proprietors throughout Russia inside clear-cut trade mark
infringement matters when litigious domain names stay blank and function without having any
web-content.

There are many benefits of utilizing cease as well as desist letters before the commencement of
your civil procedure, along with such enforcement strategy will be usually dictated by the
following consequences: (1) your infringer will be warned with regards to the infringement at
issue, along with his/her further ignorance may serve as one more evidence of the actual illegal
perform and/or intention to infringe; (2) your infringer could cease the infringement right away
and/or transfer the particular conflicting domain name towards the brand owner; (3) the particular
infringer could choose to sell the actual conflicting domain name and will always be sending an
offer for the IP holder which can be the valid proof with the infringer's bad faith. However, in the
wedding the main goal with the brand name owner would become to get particular monetary relief
for that infringement, the particular tactics of serving your cease and desist letter towards the
infringer will not end up being advisable in this regard. in practice, infringers would remain not
seeking to pay virtually any money upon demand, unless your court ordered them to accomplish
thus by simply means of judgment (upon the institution regarding infringement).
Litigants
Legally, the actual next individuals have a standing to be able to sue in Russian url of one's website
disputes: (1) recorded trade mark/company name owners; (2) recorded assignees/successors-i-title; and (3) recorded exclusive trade mark licensees. Unrecorded brand name owners, recorded
non-exclusive licensees, or additional authorised users (such as distributors and agents) are not
really empowered to always be able to enforce IP rights throughout Russia. Nevertheless, they're
able to be component of the particular civil procedure as third events in order to be able to keep
the claims involving plaintiffs. If the actual domain name infringement make the difference will be
initiated through the valid assignee or exclusive licensee, the appropriate registered assignments
or exclusive licences have to be disclosed in the course of litigation.

Because your website name owner (registrant) only bears the liability for the option with the
relevant website name as well as shall be responsible pertaining to possible infringement
associated with third party rights simply by using the chance of damages related for you to such
infringement, the civil lawsuit should be filed with the competent court against the particular
domain registrant. If the conflicting website name provides been delegated with regard to
operation of the certain website that's offering and also promoting trade marked (or similar) goods,
and/or will be involved in business actions just like individuals included in the protected company
name, the actual declare may also be brought against the vendor of such goods/services since it
bears joint along with several liability. Interestingly, as affirmed by nearby court practice, there is
simply no must sue domain name lessees (licensees), as domain registrants (lessors/licensors) won't
have the ability to shift his or her liability with regard to IP infringement by simply means of
contract.

Under the actual widespread rule regarding law, any civil lawsuit features in order to be launched
under the domicile with the defendant. Ought To a new foreign individual or perhaps business be
recorded since the url of one's website owner, it could be smart to carry any declare from the
national domain registrar (co-defendant), consequently concerning establish the actual Russian
jurisdiction more than your dispute in issue. Inside most additional cases, national domain
registrars will be normally engaged as third events throughout domain conflicts, while they is
planning to be in cost of the website name transfer method following the issuance of the court
order within favour in the plaintiff.
Legal remedies
In general, you will find many legal remedies accessible under the actual Russian law which usually
IP holders may obtain in several IP infringement matters. However, one of the most well-known as
well as consistent remedies within domain conflicts will be: (1) injunctive relief (preliminary and
also permanent); as well as (2) monetary relief (regular or statutory damages).
"If the primary goal with the brand owner can be to have certain monetary relief for your
infringement, the actual techniques of serving the actual cease as well as desist letter to the
infringer is certainly not going to end up being advisable"
Preliminary injunctions and also temporary restraining orders, if granted, will ordinarily extend to
various bars, including the particular prohibition to transfer the particular litigious domain name
for you to a 3rd party domain registrant, your prohibition to end up being able to transfer the
litigious url of one's website to some 3rd party domain registrar as well since the prohibition in
order to cancel the particular litigious domain name, while the court proceedings are pending.
Permanent injunctions and final enjoinments, if obtained, will typically relate to termination of the
claimed infringement (that is, illegal use in the trade mark and/or business name) and/or cessation
of administration with the conflicting domain name by the defendant. Because any result, the
particular plaintiff will be given the so-called preemptive right in order to sign up the actual
litigious domain names it its own title in order to end up being able to be a new/valid url of one's
website owner. Unfortunately, no automatic transfer of the litigious domain identify will occur
beneath the actual ruling with the court.

Damages may also always be claimed and also awarded inside domain conflicts. Whilst standard
damages are employed rarely within practice, since they are generally thought in order to be
burdensome legal remedies, 'monetary compensation' (equivalent to the US concept involving

statutory damages) will possibly be pretty common.

Indeed, to get normal damages the actual manufacturer owner must prove the following factors: (1)
the particular amount involving sustained damages (such as lost profits) simply by disclosing the
right approach of calculation with the same; (2) the extremely fact of IP infringement by proving
the illegal activities in the infringer; along with (3) the nexus in between damages along with illegal
activities with the infringer. If certainly one of these factors can be omitted or cannot be
demonstrated by the particular plaintiff, damages won't always be awarded by the court. at the
exact same time, for you to get statutory damages (that is, monetary compensation) the plaintiff
provides in order to demonstrate the extremely fact associated with the claimed IP infringement
only. And, it isn't required to disclose any kind of documentation simply by showing the actual
method regarding calculation of its losses, even though it could become helpful approximately any
certain extent for your purposes regarding substantiation regarding the actual amount with the
claimed monetary compensation.

By force of law, there are three avenues that IP holders may select as well as comply with when
seeking in order to obtain statutory damages within trade mark infringement matters, which
includes throughout domain conflicts: (1) a sum between 10,000 ($150) and 5 million ($75,000));
(2) double the value of the counterfeit goods; or even (3) double the expense of the actual lawful
(licensed) trade mark utilization (Article 1515(4) with the Russian Civil Code, Portion IV, successful
as regarding January 1 2008). The option regarding the right choice will be normally vested with
your trade mark owner, although inside the absence of a large quantity of counterfeits getting
purchased from your website under the actual litigious domain name, and/or the particular
underlying recorded licence agreement with almost all the suitable licence fees, your trade mark
owner may have to stay towards the 1st scenario as described above, and the court will finally
determine on the concrete quantity of award relying around the nature of infringement.
Further comment
Domain name disputes will usually take place with regard to several reasons. 1 IP holder, referring
to the unlawful trade mark/company title registration and employ as well as "limitation" regarding
its IP rights, could get the alleged trade mark/company name infringement as the principal basis
for action. another brand name owner will just base its claims about the doctrine regarding poor
faith (unfair competition) as well as the concept of threat regarding infringement. The some other
rights holder will find the unauthorised domain registration and also the utilisation regarding the
posted web content as impairment of its business reputation. Because any result, every url of
one's website litigation procedure will depend about the legal grounds with issue too because the
circumstances surrounding the case. Involving course, qualifications and also experience regarding
lawyers representing the litigants should certainly not be neglected.

Sergey Medvedev, PhD, LLM

Sergey Medvedev is a senior lawyer, trade mark
along with style attorney with Gorodissky & Partners. He graduated in the Moscow State Institute

of International Relations throughout 2006 as an international lawyer. He completed your LLM

within IP program at the John Marshall Law College (Chicago, USA) and received the particular
amount of master regarding laws in 2007. He successfully presented a new dissertation in the
Russian State Academy associated with Intellectual Property (Moscow) throughout 2012 and it
has labored being an intern from the law firm Ladas & Parry (Los Angeles, USA), and furthermore
the law firm Partridge IP Law (Chicago, USA).
Sergey joined Gorodissky & Partners within 2007. He advises customers about numerous matters
related in order to legal protection, ownership, acquisition, exploitation, licensing, securitisation,
litigation and enforcement of IP legal rights throughout Russia and the CIS. He litigates and
enforces IP rights in Russia. He combats unlawful/unauthorised use involving IP as well as illegal
content on the internet, represses unfair competition as well as false advertising, tackles parallel
imports as well as grey market items as well as fights against counterfeits along with piracy. He
represents the passions associated with customers within court and also with law enforcement
agencies. Sergey features an active practice in resolving website name disputes within Russia.