What unites the Mariinsky Theatre, the Mikhailovsky Theatre and the N.P. Akimov Comedy Theatre?

For sure, you can find a lot of common grounds and criteria for unification, but we can safely say that something new has appeared: all three cultural institutions have been successfully fighting domain disputes with ticket resellers who resell them on their websites with domain names similar to theater trademarks, hiding behind other means of individualization and objects of intellectual rights of theaters, which can be brand name, photos, etc. Potentially, the problem of such litigation concerns not only cultural events, but also sports and even transport tickets. In this article you can read about what decisions the courts have made regarding domain administrators that mislead users, and what amounts of compensation plaintiffs can expect in such disputes.

A domain dispute is a case on the legality of using a domain name similar to a result of intellectual activity or a means of individualization belonging to the applicant, in which a requirement is stated to compel or prohibit the commission of any actions that are subject to enforcement (from a certificate on some issues related to the procedural procedure for the application of interim measures in a domain dispute, approved by the Resolution of the Presidium of the Intellectual Property Rights Court dated 10/15/2013 No. SP-23/3).

In March 2019 The Mariinsky Theatre achieved a ban on the use of the domain name mariinsky.com.ru designations similar to trademarks belonging to the theatre (see the decision of the AC of Moscow dated 06.03.2019 in case No. A40-225854/2018).

In May 2019 The St. Petersburg State Academic Opera and Ballet Theater named after M.P. Mussorgsky - Mikhailovsky Theater also achieved a similar ban, specifically a ban on using in a domain name mikhailovsky.com.ru a designation similar to the trademarks belonging to it. The theater also demanded compensation in the amount of 5 million rubles (in accordance with paragraph 4 of Article 1515 of the Civil Code of the Russian Federation), but the court awarded it in a smaller amount of 100,000 rubles only (see the decision of the AC of Moscow dated 05/17/2019 in case No. A40-224/2019).

In July 2019 The Academic Comedy Theater named after N.P. Akimov followed the successful experience of their neighbors and repeated the judicial success in its own way: the plaintiff achieved not only a similar ban in relation to the domain name akimovkomedia.com.ru but also a substantial compensation of 1 million rubles (see the decision of the AC of Moscow dated 08.07.2019 in case No. A40-58361/2019).

What (or who) unites these cases? The defendant does. In all these cases CNF.ru LLC appeared as the defendant. Obviously, there was a reason for that. And now let's take a closer look at these cases.

The causes of these domain disputes

The factual side of these cases is covered in court decisions.

Such, in the case with the Mariinsky Theater, it was indicated that on the website on the Internet at mariinsky.com.ru booking and ticket sales for performances and concerts of the Mariinsky Theatre were offered.

In another case, the Mikhailovsky Theater, the court found that the defendant used the website mikhailovsky.com.ru to sell tickets for events held by the plaintiff on their stage, and gift certificates were offered for sale, the exchange of which for entrance tickets was impossible at the theater box office, since the theater does not have such products as gift certificates. In addition, according to the plaintiff, a trademark registered by the plaintiff and the plaintiff's brand name were posted on the defendant's website. The official address of the plaintiff was posted in the "Contacts" section on the defendant's website. It was also stated that the tickets that were presented on the defendant's website were original, but the content of the plaintiff's official website (photos, repertoire, etc.) was copied, and the false information about the plaintiff was posted.

In the case of the N.P. Akimov Comedy Theater, the court determined that the defendant sold tickets to theater events without being its partner and without having any contractual relations with the latter.

Thus, the owners of domain names, to whom the theaters filed lawsuits, organized and conducted activities to sell tickets to events that were held in these cultural institutions, with violations of the rights of the theaters. This problem is not a new one: we often encounter stories and journalistic reports about ticket resellers and difficulties in purchasing tickets to landmark events at their face value. Since ticket sales are allowed in Russia, including sales via the Internet, participants in this market of a certain category with their own understanding of business ethics in the struggle for the buyer often try to mislead them by creating an illusion of a buyer visiting the official website of the event organizer. The user also needs to remain vigilant and be attentive to the details of the website on which he purchases tickets.

Who else sued? Who's next?

The theatres mentioned above are not the only participants in domain disputes related to tickets sale for theatrical and other events.

So, in another case, as part of the claim of JSC CROCUS INTERNATIONAL against the same defendant CNF.ru LLC, was considered a dispute in relation to domain names, the administrator of which is the defendant crocus-city-hall.ru and crocus-city.com.ru. In support of the claims, the plaintiff indicated that on the Internet he has discovered the websites crocus-city-hall.ru and crocus-city.com.ru through which the tickets sale (including their booking and delivery) was carried out for events held in a concert Hall of Crocus City Hall which is owned by the plaintiff. The websites also use verbal designations "Crocus", "Crocus City Hall", and photographic images of the concert hall "Crocus City Hall". The plaintiff also demanded compensation in the amount of 500,000 rubles.

The case of this plaintiff was also resolved in his favor — the court forbade the defendant to use a designation confusingly similar to the plaintiff's trademarks and brand name, and also satisfied in full the claim for compensation (see the decision of the AC of Moscow dated 12/18/2018 in case No. A40-39211/18-51-276).

In another case, the lawsuit of the State Academic Bolshoi Theater of Russia against citizen X. and Snabservice LLC on protection of trademark rights was considered. The court found that Snabservice LLC carried out the ticket sale to the Bolshoi Theater using the website bolshoi.me (and from the content of the website it could be concluded that tickets were distributed on behalf of and with the participation of the theater, which was not true). The administrator of the domain name bolshoi.me was Citizen X. The court recognized the existence of unlawful use of the theater's individualization means by the co-defendants and ruled in favor of the plaintiff. However, the amount of compensation was reduced by almost 25 times (from the required almost 5 million rubles to 210,000 rubles total). Disagreeing with this, the theater challenged the awarded amount of compensation and achieved its goal: the the appellate court awarded the plaintiff compensation in the amount of the initial claims.

The appeal noted that, when determining the amount of compensation for violation of the plaintiff’s exclusive rights to trademarks and reducing it, the court of first instance did not take into account the amount of unlawful benefit obtained from the illegal use of a confusingly similar designation. This unlawful benefit was seen from the information on the cost of tickets sold on the website bolshoi.me. As follows from the content of this website, the ticket prices offered were significantly (on average by 1.5—3 times) higher than the ticket cost of the same characteristics sold directly by the plaintiff, which indicates a significant amount of illegally obtained benefits.

In addition, the appeal took into account the report on the assessment of the market value of two trademarks of the Bolshoi Theater of Russia, according to which the market value of these marks is almost 2 billion rubles (see the Resolution of the Ninth Arbitration Court of Appeal dated 06/28/2013 No. 09AP-16923/2013-CC in case No. A40-162939/2012).

It is not easy to say who will be next dissatisfied copyright holder in domain disputes. But there are grounds to consider the Moscow International House of Music as a potential plaintiff. Thus, an "Important Information" page has appeared on their website mmdm.ru (available here). It contains the following message:

"Recently appeared websites mmdm.com.ru, www.дом-музыки.рф, mmdm-tickets.com are not official websites or authorized agents for the sale of MMDM tickets. Beware!"

At the time of publication of this article, the first website was not open, but the other two were functioning. If the House of Music fails to resolve the issue out of court, then we will probably face a new court case with a new plaintiff.

Практические вопросы разрешения доменных споров - Кейс (Реготов Виталий Сергеевич)

Смотреть онлайн >> Виталий Сергеевич Реготов рассказывает о возможном способе борьбы с сайтами-двойниками, использующими зарегистрированный товарный знак в доменном имени, на примере спора Мариинского театра. Лектор обращает внимание на практические вопросы, возникающие при подготовке иска и рассмот…

Legal AcademyРеготовВиталийСергеевич

About compensation for disputed domains

What are the amounts of compensation for domain disputes of the cultural institutions under discussion? For clarity, the data on the amounts is presented in the form of a table in which information on each of the cases is grouped, as well as the circumstances mentioned in the judicial acts that the court took into account when determining the final amounts of compensation.

In many ways, not only in the examples above, but also in other cases of numerous domain disputes, the courts are guided by the legal position of the Presidium of the Supreme Arbitration Court of the Russian Federation, set out in Resolution No. 8953/12 of 11/20/2012. According to this position, the amount of compensation for the unlawful use of a work should be determined based on the need to restore the property status of the copyright holder. This means that it must be placed in the property position in which it would have been if the work had been used lawfully. Therefore, when determining the amount of compensation, it is necessary to take into account the possibility of bringing to justice by the copyright holder all known violators of his right. And although in domain disputes, in the vast majority of cases, it is not about the unlawful use of copyright objects, but about the protection by plaintiffs of rights to means of individualization (mainly trademarks), the above legal position is important for this category of cases.

In fact, there are quite a lot of factors influencing the amount of compensation. In many cases, the courts quote each other, pointing out that when determining the amount of compensation, the court takes into account, for example, the nature of a violation committed, the period of illegal use of the result of intellectual activity, the degree of guilt of the violator, the principles of reasonableness and fairness, as well as the proportionality of compensation to the consequences of the violation (see, for example, the Intellectual Property Court Ruling dated 09/28/2016 No. C01-832/2016 in case no. A65-26240/2015, dated 12/01/2015 no. C01-805/2015 in case No. A56-61922/2014, Fifth Arbitration Court of Appeal dated 10/19/2011 no. 05AP-6335/2011 in case No. A51-5935/2011, Eighteenth Arbitration Court of Appeal dated 05/20/2013 no. 18AP-3450/2013 in case No. A07-16055/2012, Thirteenth Arbitration Court of Appeal dated 09.08.2016 No. 13AP-12673/2016 in case No. A56-74358/2015).

Among other data, there is such an indicator as divisors. By dividers, we propose to understand the values of how many times the courts eventually reduced the initial claims of the plaintiffs for the compensation they demanded. It should be noted at once that the smaller the divisor in its value, the better it is for the plaintiff: if the divisor is equal to one (1.0), it means that the court satisfied the plaintiff's initial claims regarding the recovery of compensation from the defendant in full. And, of course (which is quite logical), the higher the plaintiff's initial claims regarding the amount of compensation, the less likely it is that the court will satisfy them in full. There are cases like that, but not many.

Therefore, pay attention to cases in the table where the divisors are equal to 1.0: CROCUS INTERNATIONAL JSC in its case achieved compensation in the amount of 500,000 rubles, and the Bolshoi Theater was able to receive the maximum amount of 5 million rubles provided for by the law (in Article 1515 of the Civil Code of the Russian Federation). Such results in domain disputes in Russia should be assessed as very good and unique, respectively.

At the same time, of course, do not underestimate the absolute values of compensation amounts. As you can see, in the case with the N.P. Akimov Comedy Theater, the court awarded the plaintiff compensation in the amount of 1 million rubles. And even if in this case the value of the divisor was already 5.0, but in absolute terms, the amount of compensation has reached a serious amount. For domain disputes, the value of the divisor 5.0 is quite a good indicator (in many cases, courts are willing to reduce the compensation claimed by the plaintiffs, sometimes tenfold), and the amount of compensation of a million rubles is a very good result, relatively uncommon in such cases.

Let's go back to the factors.

We should also not forget about such aspects as the identity (status) of the plaintiff himself and the professionalism of the lawyers who form a position for the plaintiff and collect evidence. They may seem obvious to some, but they are nevertheless worth mentioning directly. Please note: in the Mikhailovsky Theater case, the court reduced compensation to the plaintiff tenfold (the divisor in this case is 50.0). Why so? The answer to this question is given in the court decision by the court itself:

"The plaintiff has not provided adequate, reliable, admissible evidence that the violation of exclusive rights committed by the defendant entailed such consequences for him that he had the right to expect compensation in the declared amount."

Or, on the contrary, consider a court decision on a domain name bolshoi.me . The Ninth Arbitration Court of Appeal, in its decision dated by 06/28/2013 No. 09AP-16923/2013-CC in case No. A40-162939/2012, approved the amount of compensation from the co-defendants in favor of the plaintiff, the Bolshoi Theater, in the amount of 5,000,000 rubles. What did the court say about the status of the plaintiff himself? Many lines in the judicial act are devoted to the status and importance of the theater as an independent entity:

"The Bolshoi Theatre is one of the largest theaters in Russia and the world. The Bolshoi Theatre is a cultural heritage of the peoples of the Russian Federation with more than two centuries of their history, marked by opera and ballet performances that belong to the masterpieces of world art (including productions of outstanding works by famous composers). The contribution of the Bolshoi Theatre of Russia to the development of culture in both the Russian Federation and foreign countries has determined the special status of this institution as a world-famous theater, distinguished, among other things, by a special professional level of both artists and other employees. It should also be borne in mind that it is the controversial designation "BOLSHOI" that is the international name of this theater, under which it received its wide fame, which makes this designation a brand of national and global importance. Historically, this name belongs to a category of proper names that retain their phonetic characteristics (sound) in any language of the world. Thus, the State Academic Bolshoi Theatre of Russia is one of the elements of the international prestige of the Russian Federation."

Has the court noted similar characteristics of the Mikhailovsky Theater in its decision on its domain dispute? No, it hasn't. The court's decision in the Mikhailovsky Theater case says the following:

"The trademarks and brand name of the plaintiff <...> are well-known means of individualization in the field of culture."

That's the whole laconic assessment of the court regarding the plaintiff's status as a cultural institution. Not a word about international prestige.

The question of how justified the situation is when, in cases with similar circumstances, compensation for violation of intellectual property rights for one plaintiff amounts to a maximum of 5 million rubles (with a divisor of 1.0), and the court awards only 100,000 rubles to another (with a divisor of 50.0) remains open. Nevertheless, the analysis of judicial acts in relation to cultural institutions and the arguments given by the courts in making decisions should help plaintiffs in similar disputes, including other categories, for example, organizers of sports events, carriers, etc.

Take note

Theaters are trying to resist unscrupulous business entities with technical and organizational measures. For example, the Chekhov Moscow Art Theater limited the time for booking tickets on its website and demanded such restrictions on the websites of its aggregator partners <2>. But now we see that theaters and other cultural institutions are increasingly confidently and massively trampling the path of fighting resellers through lawsuits.

1. The Kardamon project is dedicated to legal issues of domain names. In addition, the author of the article is the creator of the Kardamon.Dm database which is about court cases on domain disputes in Russia. Additional information about the project and the database can be found on the website: dorotenko.pro/kardamon. Opinions expressed by the author may differ from the position of YANDEX LLC.
2. See Begimbetova I., Lieberman M. The art of the Russian ticket. How the theatrical mafia inflates prices // Kommersant Money Magazine No. 12 dated 03/28/2016, p. 19.