Collections of court decisions. Such different domain disputes


this text is a translation of this article in Russian made by Valentina D.


To date, Russian courts have developed a certain practice for considering litigation regarding domain names. Thus, domain names are the main subject of litigation, and sometimes appear as optional. As a rule, such proceedings arise due to violations of the rights of owners to their trademarks. However, there are also cases when the actions of domain owners are recognized as a violation of the rights to a company name or commercial designation.

As established by Russian civil legislation, compensation for violations of the exclusive right to intellectual property can range from 10,000 to 5,000,000 rubles. In judicial practice, there are examples when a similar amount of compensation (for violation of trademark rights) was set by the court as the maximum - 5,000,000 rubles.

Trials in such cases can be classified on several grounds. Below I present a classification based on the categories of intellectual property objects whose rights were violated by domain name administration actions:

1. Domain name vs Trademark

1.1. The domain name is identical to the trademark

swatch.ru

The date of decision: 13.10.2010
The decision text: docs.pravo.ru/document/view/5216339
The case summary: The plaintiff (Swatch AG) is the copyright holder of the trademark “SWATCH”. The domain was registered by the defendant after priority of rights to the trademark. According to the court, although the domain was not used and is not in use, the very fact of owning an Internet page, the domain name of which contains a designation identical to the trademark, creates the opportunity for the defendant to attract to his page potential consumers of services similar to those for which the trademark used by the copyright holder. A graphical similarity between the trademark and the domain has been established.
Decision: transfer of the domain to the plaintiff, compensation for violation of the use of the trademark is 10,000 rubles (the plaintiff requested 50,000 rubles).

It should be understood that when it comes to the identity of a domain and a trademark / brand name / commercial designation, I mean that the domain name completely coincides with the name of trademark / brand name / commercial designation (at the same time, I do not take into account the element of the domain name that makes up the domain zone – .рф/.ru/.com, etc.). The courts, in turn, in most cases recognize such domains and a trademark / brand name / commercial designation as confusingly similar, but not identical to each other.
Other examples include court cases against the domain higer.ru (link), ombrello.me (link).

1.2. A domain name is confusingly similar to a trademark

This category of cases is best characterized by litigation, where the plaintiff was Alliance LLC in defense of the rights to its trademark “ufarabota.ru”:

rabota-ufa.ru

The date of decision: 14.08.2009
The decision text: http://docs.pravo.ru/document/view/3597100
The case summary: The plaintiff (Alliance LLC) is the copyright holder of the trademark “ufarabota.ru”. The defendant is the owner of the domain rabota-ufa.ru . The court found that the defendant's domain "rabota-ufa.ru " and the plaintiff's trademark "ufarabota.ru " are similar in phonetic and semantic features.
Decision: ban on the use of the trademark “ufarabota.ru” in the domain name “rabota-ufa.ru”. Compensation is 100,000 rubles.

Alliance LLC did not stop there and won similar proceedings for the domains ufa.rabotavgorode.ru (a settlement agreement was approved) and rabota-ufa.info (link).

Also, a domain name can be considered confusingly similar to a trademark when only part of its name is someone’s trademark:

miraxa.net.ru

The date of decision: 19.10.2011
The decision link: http://docs.pravo.ru/document/view/20227310/
The case summary: the plaintiff is the copyright holder of the trademark "MIRAX" and "МИРАКС". The court found that individual elements of the domain were confusingly similar to the trademark.
Decision: Prohibition for the defendant to use trademark in the domain miraxa.net.ru. The amount of compensation is 50,000 rubles.

2. Domain name vs brand name

2.1. The domain name is identical to the brand name

курскпромбанк.рф

The date of decision: 20.10.2011
Link to the solution: http://sudact.ru/arbitral/doc/Jib78IJQ4eom
The essence of the case: The plaintiff demanded to stop using its abbreviated corporate name Курскпромбанк JSC in the domain name курскпромбанк.рф. The domain name was registered by the defendant later than the plaintiff's right to the brand name arose. The court found that when registering the domain, the verbal designation "курскпромбанк" was used, identical to the brand name belonging to the plaintiff. The domain name is "курскпромбанк.рф" was administered by the defendant, a person unrelated to banking transactions and who did not receive consent from the plaintiff to use his business name.
The defendant also did not have any legal rights and interests in this domain name, since he was not the owner of the trademark or trade name of the same name, and the domain name does not reflect his name or the trade name of his company. Also, the defendant did not provide evidence of other legitimate interests in the use of the disputed designation.
Interestingly, according to the court, the defendant should and could have known that a legal entity was registered in the city of Kursk - "Курскпромбанк" JSC, and the presence of a domain of the same name in the Russian Internet sector could lead users astray. It is obvious that the complete coincidence of the second-level domain name with the plaintiff’s business name constitutes an abuse of the technical uniqueness of the domain name.
Decision: the defendant’s actions were recognized as a violation of the plaintiff’s rights to the company name and he was prohibited from using the domain name "курскпромбанк.рф"
Note: the case was reviewed in the Ninth Arbitration Court of Appeal and the Federal Arbitration Court of the Central District, but higher authorities confirmed the correctness of the decision of the court of first instance.

2.2. The domain name is confusingly similar to the business name

traktornye-zavody.ru

The date of decision: 06.03.2013
The decision text: http://sudact.ru/arbitral/doc/gje0U5einiNx
The case summary: The plaintiff is the copyright holder of the exclusive right to his company name - Limited Liability Company "Corporate Management Company" Concern "Tractor Plants". The defendant is the owner of the traktomye-zavody.ru domain. A linguistic examination was carried out, its result: in the plaintiff’s business name the words “tractor factories” are identical to the domain name. The court concluded that there was a confusing similarity between them. According to the court, one should not take into account the presence of such words as “Concern Corporate Management Company” in the plaintiff’s corporate name, since they do not draw attention to themselves, unlike the words “tractor factories.” The plaintiff and the defendant are competitors, and the website traktornye-zavody.ru is used by the defendant to bring to the attention of consumers information about the goods sold to them, which are produced, among other things, by factories that are part of the Tractor Plants Concern. Therefore, the defendant's actions were qualified as an act of unfair competition.
Decision: prohibiting the defendant from using the domain name traktornye-zavody.ru.
Note: The hearing of the case in the appellate instance will take place on May 28, 2013.

3. Domain name vs commercial designation

defence-e.ru

The date of decision: 01.06.2012
Link to the solution: http://ras.arbitr.ru/PdfDocument/e1a495d2-ecb4-4d6c-bdb1-0925913b0758/А60-15926-2012__20120601.pdf
The case summary: The defendant registered the domain defense-e.ru on January 31, 2008 for the purpose of further sale of the domain name. The plaintiff demanded the transfer of rights to this domain name on the basis that he owned the rights to the commercial designation "Defense". owever, due to the peculiarities of the emergence of rights to a commercial designation, the court recognized that the plaintiff had such a right only after July 13, 2010, the date of registration of the plaintiff as a legal entity. Thus, the defendant acquired the right to use the domain name defence-e.ru much earlier than the date of registration of the plaintiff in the Unified State Register of Legal Entities.
Decision: the claim was denied.
Note: the case reached to the Federal Antimonopoly Service of the Ural District, however The decision of the trial court was upheld.

4. Domain Name: trademark vs trademark

людидела.рф

The date of decision: 05.04.2013
The decision text: http://sudact.ru/arbitral/doc/6AcpIJPfArdu
The case summary: The Plaintiff is the copyright holder of the Trademark "People of Dela" in relation to a number of works and services of 09, 14, 28, 35, 36, 38, 39, 42, 43 classes of the ICGS (International Classification of Goods and Services). The defendant is the copyright holder of the "ЛюдиДела" trademark in relation to goods of classes 16, 41, 42 of the ICGS. The defendant, being the administrator of the domain name "людидела.рф", posted on the website information about the services for searching and recruiting personnel provided by the company "Recruitment Agency "Люди Дела". In turn, the plaintiff is the owner of the exclusive right to the trademark “Люди Дела” in relation to those services (advertising agencies, advertising, recruitment offices, staffing, consultations on business management (class 35 of the ICTU) provided by a third party - LLC Recruiting Agency "Люди Дела", including using the website "людидела.рф", the administrator of which is the defendant. At the same time, a comparative analysis of trademarks according to the evidence of the plaintiff and defendant indicates that these trademarks are confusingly similar. According to paragraph 6 of Art. 1252 of the Civil Code of the Russian Federation, if various means of individualization (incl. trademark) turn out to be identical or confusingly similar and, as a result of such identity or similarity, consumers and/or counterparties may be misled, then the means of individualization, the exclusive right to which arose earlier, has priority. The holder of such an exclusive right may, in accordance with the procedure established by the Civil Code of the Russian Federation, demand that the provision of legal protection to a trademark (service mark) be invalidated. Since the plaintiff’s trademark has priority on July 30, 2001 (priority is established by the date of receipt of the application), that is, earlier than the defendant’s trademark (20.09.2004), there is a possibility of misleading the consumer due to the similarity of the services provided by the plaintiff and a third party, as well as trademarks of the plaintiff and defendant have been established; therefore, the plaintiff’s trademark has priority, and therefore the claims must be satisfied.
Decision: Prohibition for the defendant to use the plaintiff’s trademark “ЛЮДИ ДЕЛА” in the domain name “людидела.рф”

henco.ru

The date of decision: 26.04.2012
The decision text: http://kad.arbitr.ru/PdfDocument/50cb88b5-4c2f-4001-bae2-a8d8ab6a8fc3/A41-10659-2010_20121022_Reshenija i postanovlenija.pdf
The case summary: The plaintiff is the copyright holder of the Henco trademark. The defendant is the copyright holder of the trademark "HENKO". The plaintiff believed that the actions of the defendant to register and administer the domain name "henco.ru" were an abuse of right. However, the court concluded that the parties' areas of activity had different focuses; since the defendant and plaintiff are the owners of the Henco trademark, both persons are equal owners of this trademark and therefore can use it in all ways provided for by law (including in a domain name); therefore, the plaintiff’s argument about abuse of rights on the part of the defendant is not accepted by the court. In addition, the plaintiff believed that the defendant actually created obstacles for him to register a domain that reproduced his trademarks, which did not allow the plaintiff to exercise his legal rights to trademarks in the Russian segment of the Internet. But as the court rightly pointed out, the plaintiff was not deprived of the opportunity to become a domain name administrator in the “.рф” zone domain. According to the court, the plaintiff did not prove that the defendant does not have any legal rights and interests in relation to the domain name and that it is using the domain name in bad faith.
Decision: the claim was denied.
Note: This proceeding has a long history. The above was the decision of the court of first instance, the correctness of which was confirmed in higher authorities.

5. Domain name: trademark vs commercial name

See below for the dispute regarding the domains lad-m.ru and ladm.ru, since in that case the plaintiff indicated that the actions of the defendant violated his rights to both the company name and trademarks. But the court refused to satisfy the plaintiff’s demands for protection of trademark rights, since the domains were registered with the defendant before the registration of the plaintiff’s rights to the trademarks “LAD-M” and “LADM” and before the emergence of priority on them.

6. Domain name: trademark vs commercial designation

prontopizza.ru

The date of decision: 31.08.2012
The decision text: http://kad.arbitr.ru/PdfDocument/07ebb335-8999-4c72-b85a-6c7be6ee82ed/A43-15155-2012_20120831_Reshenie.pdf
The case summary: The plaintiff is the copyright holder of the trademark "PRONTO", the defendant - the commercial designation "Pronto PIZZA e PASTA" and the above domain. Due to the fact that the visual image was widely used in the defendant’s business activities before the priority date of the plaintiff’s trademark (23.05.2007), the plaintiff, as the owner of the trademark, does not have the right to prohibit the use of the disputed designation by a person who in good faith used it to individualize his enterprise before the priority date trademark. Moreover, the court stated the following: despite the fact that the trademark is registered, the actions of the plaintiff aimed at its registration, based on the factual circumstances of the case stated above, constitute an abuse of right.
Decision: the claim was denied.

7. Domain name: trademark vs business name

lad-m.ru and ladm.ru

The date of decision: 08.12.2009
The decision text: http://www.arbitr.ru/bras.net/f.aspx?id_casedoc=1_1_00ce1c87-ae9b-4cf4-8999-54e43b3da84c
The case summary: The applicant is the copyright holder of the trademark "LAD-M" and "LADM" (certificates no. 335306 and 337921). The defendant has been administering the domain name "ladm.ru" since April 20, 2004, and the domain name "lad-m.ru" since May 2, 2006.
Decision: the decisions of the lower courts were overturned, the defendant's actions in administering the domain names "lad-m.ru" and "ladm.ru" were recognized as a violation of the rights of CJSC "LAD-M" to the company name, the defendant was prohibited from using these domain names.

  1. I would also like to draw attention to the following interesting aspects that have emerged in judicial practice:

8. Interesting aspects

8.1. The owner of the domain name offered the owner of the trademark (or an unlimited number of persons) to purchase the domain from him

svetaled.ru

The date of decision: 12.12.2012
The decision text: http://sudact.ru/arbitral/doc/U93q5pcgror1
The case summary: The plaintiff is the copyright holder of the trademark "SvetaLED". The defendant is the owner of the above domain. On June 23, 2011, he sent the plaintiff a commercial offer to purchase the domain name “svetaled.ru” for 3,000,000 rubles. The domain name used by the defendant was registered for him later than the registration of the plaintiff’s trademark. An Internet page with the domain name “svetaled.ru” is actually used by the defendant to post information about similar products for the use of which the plaintiff’s trademark is registered.
Decision: prohibiting the defendant from using the trademark “SvetaLED” or a designation confusingly similar to it in the domain name “svetaled.ru”.

медиа-маркт.su

The date of decision: 10.03.2010
The decision text: http://docs.pravo.ru/document/view/4275864
The essence of the case: The plaintiff is the copyright holder of the trademark “Media Markt” and “Медиа маркт”. On the website медиа-маркт.su, his trademark is used without the consent of the Plaintiff. In addition, this website contained an offer to sell a domain name, namely, information that the domain name медиа-маркт.su was for sale and indicated email addresses for communication. In addition, the website contained links to the websites of companies selling electrical household goods (i.e., the domain name was used by the defendant in relation to goods similar to the goods protected by the plaintiff’s trademark).
Decision: the defendant’s actions in registering and using the domain name медиа-маркт.su were recognized as an abuse of right. The defendant was prohibited from using the designation “Медиа Маркт” in domain names, as well as on website pages, for goods and services for which the plaintiff’s trademark was registered.

8.2. The subjects of proceedings in Russian courts are domains not only in the RU/SU/РФ zones

miraxanet.com – link – compensation of 50,000 rubles
bolshoi.me – link – compensation of 10,000 rubles
ombrello.me – link – compensation of 60,000 rubles
mirax.me and mirax.tv – link – compensation of 50,000 rubles
hansa-lex.info – link – compensation of 50,000 rubles
guahoo.org – link

At the same time, in the case regarding the domain miraxanet.com, the defendant was a foreign citizen (citizen of Ukraine), but the case was considered by the Arbitration Court of Moscow, since the plaintiff has a Russian trademark “MIRAX”.

8.3. Successful plaintiffs (litigated more than once, sued successfully)

a. EP Starostin V.A.

onegagipertonik.ru
The date of decision: 19.10.2011
Solution link: http://docs.pravo.ru/document/view/20353087
The essence of the matter: The claims of this plaintiff are among the most interesting on this topic. The plaintiff is the owner of trademark "ONEGA". Initially, they filed a lawsuit regarding this domain name. During the trial, the court found that the products sold by the defendant through retail trade, as well as through the website “onegagipertonik.ru”, are identical to the products manufactured by the plaintiff under the trademark “ONEGA” (moreover, these products were purchased by the defendant from the plaintiff), which was recognized by the court as a violation by the defendant of the plaintiff’s exclusive rights due to the illegal use of a designation that was confusingly similar to the plaintiff’s trademark.
Decision: to prohibit the defendant from using the plaintiff’s trademark in the domain name “onegagipertonik.ru”, to recover from the defendant in favor of the plaintiff compensation for the illegal use of the trademark in the domain name in the amount of 5,000,000 rubles (and this is an absolute record for today in judicial practice on such matters!).

Then this plaintiff won another lawsuit regarding another domain - onegamed.ru (the court decision is available here), and he also wanted to receive compensation in the amount of 5 million rubles , however, the court reduced it to 500,000 rubles.

b. PJSC "KAMAZ"

A representative of the automobile industry confidently won court cases regarding the domains kamaz-nsk.ru (link to decision), obves-kamaz.ru (link to decision), kamaz-02.ru and kamaz-444.narod.ru (link to decision), kаmazcentrservis.ru (link to the decision).

c. Alliance LLC

This plaintiff has already been discussed above: he is the copyright holder of the trademark “ufarabota.ru” and won disputes regarding the domains rabota-ufa.ru, ufa.rabotavgorode.ru and rabota-ufa.info.

However, there are many such subjects. One can immediately recall only Buki LLC (koza-dereza.ru (link to decision), ko3a-dere3a.ru (link to decision) and Brookvale Finance Limited (miraxa.net.ru (link to solution ), miraxanet.com (link to solution). But it is clear that the list of such persons is not limited to this.

8.4. High amounts of compensation by court decision

a. 100,000 rubles or more

b. 500,000 rubles or more

c. 1,000,000 rubles or more

8.5. Funny domain names that were subjects of the proceedings

However, even in such disputes, sometimes you come across names that can make you smile:

Unfortunately, I did not find any suitable examples from Russian judicial practice when they were held accountable for administering a domain name that was used for phishing purposes (the Ukrainian practice knows such an example: the domain headhuhter.ru, see more news about this here), as well as an example when a domain name - the subject of a dispute - would contain the surname of one of parties (in this situation, only news came across regarding the domain name advocatekim.ru, see more news about this here, but judging by If this address redirects to another website of this lawyer, then most likely the case was resolved in his favor).