The application of pre-trial and trial interlocutory injunctions in domain-related disputes.
Domain disputes are usually dealt with by the courts of general jurisdiction, since the majority of domain name administrators are individuals.
As explained in paragraph 1.2. of the Information on the Issues Arising in the Examination of Domain Disputes, which was approved by decision No. SP-21/4 of the presidium of the Intellectual Property Rights Court of 28.03.2014, a claim to suppress the actions that violate the right to a trademark and that are expressed in the illegal use of a domain name may be entered against the administrator of the respective domain name.
At the same time, the judges of the courts of general jurisdiction are not proficient in the legal nature of such an item as a domain name, given the lack of legal regulation in the fourth part of the RF Civil Code. The courts of general jurisdiction take the practice of considering this category of disputes by the arbitration courts extremely reluctantly.
As a consequence of such misunderstanding, it is hard to explain to the judges the necessity of imposing trial interlocutory injunctions in connection with the fact that the change of the administrator of the domain name will result in the need to replace the defendant by a proper one.
In this connection, it is expedient to submit an application for the establishment of pre-trial restrictions in respect of the registrar of the domain name, before filing a lawsuit.
Such an application is submitted by way of filling in a form on the website of the Coordination Center for TLD RU.
In accordance with paragraph 2.4. of the Regulation "On the procedures to be applied in the event of disputes related with domain names", which was approved by decision No. 2012-07/47 of the Coordination Center for TLD RU of 20.09.2012, pretrial restrictions in respect of the actions related with the domain name are set for a period of 14 calendar days. At the end of this period, the restrictions are removed automatically.
Such a 14-day period is needed for a lawsuit to be filed with a court, and for a court to allow the lawsuit to proceed.
After the court allows the lawsuit to proceed, it is necessary to send a copy of the decision on its allowing to the registrar.
As from the day of the receipt of the evidence in respect of commencing the trial proceedings, the registrar establishes restrictions on the domain name for a period of 3 months, to be exact - 90 calendar days. This period is given for consideration of the lawsuit on the merits.
However, as we all know very well, this period is often not enough.
There are difficulties with the notification of the defendant - individual, as well as with confirmation of his/her registration address, in connection with which the court sends numerous requests and telegrams, which leads to the repeated adjournment of court hearings and prolongation of the period of the examination of the judicial dispute.
Confirmation of the actuality of the existence of administrator’s registration address is necessary because, until recently, when registering a domain name, the administrator did not provide the supporting documents to the registrar, and indicated the address at discretion.
In this situation, the ideal remedy against the registrar change is the imposition of trial interlocutory injunctions, because they are valid for an indefinite term until their cancellation by the court. Moreover, unlike the arbitration process, in the civil process the interlocutory injunctions are not subject to the state duties.
The procedural legislation provides for the possibility of the court to impose lawsuit securing measures and pre-trial interlocutory injunctions.
Here, pre-trial interlocutory injunctions are aimed to ensure the property interests of the applicant before filing a lawsuit.
Moreover, the RF Code of Civil Procedure, Article 144.1, provides for preliminary interlocutory injunctions in respect of the protection of copyright items and the related rights on the information and telecommunications networks only, including the network Internet.
The question whether these rules cover domain disputes remains controversial.
In the case of consideration of the domain dispute in the arbitration court, the court based on Article 99 of the RF Code of Arbitration Procedure, at the request of the claimant may take pre-trial interlocutory injunctions.
In accordance with paragraph 1 of Article 99 of the RF Code of Arbitration Procedure, "Based on the application of an organization or a citizen, the Arbitration Court is entitled to take pre-trial interlocutory injunctions aimed to ensure the property interests of the applicant before filing of a lawsuit."
When rendering a decision to take pre-trial interlocutory injunctions, the court in such a decision sets a deadline for filing a lawsuit. This period may not exceed fifteen days as from the day of the decision. After the lawsuit is filed, the pre-trial interlocutory injunctions work as lawsuit securing measures.
If the lawsuit has been already filed (and simultaneously with filing of the lawsuit), the claimant may apply for interlocutory injunctions at any stage of the process.
According to Article 139 of the RF Code of Civil Procedure "Based on the application from the persons involved in the case, the judge or court may take lawsuit securing measures. The lawsuit securing is allowed in any situation, if failure to take lawsuit securing measures may make it difficult or impossible to enforce a court judgement."
By virtue of paragraph 1 of Article 90 of the RF Arbitration Procedure Code "The arbitration court, upon the application of the person participating in the case, and that of another person as well - in the cases provided for by this Code, may take urgent temporary measures securing the lawsuit or property interests of the applicant (interlocutory injunctions)."
The interlocutory injunctions sought must be proportionate to the asserted claim and directly related to the subject of the dispute. These measures must be necessary and sufficient to secure the enforcement of the judicial act.
As a rule, the court may be asked to prohibit to perform any acts aimed to transfer the domain administration rights to another person, including registration of the transfer of the domain name support to another registrar, the cancellation of registration of the domain name.
Along with this, such interlocutory injunctions may be addressed to both the administrator of the domain name and the registrar.
By virtue of paragraph 1 of Article 140 of the RF Code of Civil Procedure, "The following may serve as lawsuit securing measures:
3) bar other persons from taking certain actions concerning the subject matter of the dispute, including transferring property to the defendant or performing other obligations in relation to it;
3.1) entrusting the defendant and other persons with the obligation to perform certain actions concerning the subject matter of the dispute in respect of violation of copyright and (or) related rights, except for rights to photographic works and the works obtained in the ways analogous to photography on the information and telecommunication networks, including on the Internet.
In accordance with paragraph 1 of Article 91 of the Arbitration Procedure Code "The following may serve as interlocutory injunctions:
2) barring the defendant and other persons from performing certain actions relating to the subject matter of the dispute."
On the basis of the judicial acts on the application of interlocutory injunctions (lawsuit securing measures), the registrar enters relevant information into the Registry which concerns the court-ordered restrictions in respect of the actions related with the domain name, and sends the copies of these judicial acts to the Coordinator within 2 working days as from the date of receipt of the relevant judicial acts.
Upon receipt of the relevant judicial acts, the registrar is obliged to ensure compliance by the administrator with the restrictions.
If the lawsuit securing measures are not taken, this may hinder or prevent further enforcement of the court judgment.
Unfortunately, in practice, failure to take interlocutory injunctions often lead to long-term negative consequences.
The same happened under the case in respect of the lawsuit by JSC "VDNH" against the administrator of the domain vdnh-forum.ru for the protection of exclusive rights to the trademarks of "VDNH."
Initially, the lawsuit was filed with the Ostankino District Court of the city of Moscow at the seat of the defendant.
The Ostankino District Court, in violation of the clarification of the higher court, refused to accept the lawsuit referring to the fact that it was not within the jurisdiction of the court of general jurisdiction.
Since the disputes related with the subjection to jurisdiction are prohibited, the claimant sought the protection of its rights in the Moscow Arbitration Court, where the lawsuit was allowed to proceed.
In this regard, at the request of the copyright owner, the registrar imposed restrictions in respect of the domain name for a period of 90 calendar days, and the court refused to impose interlocutory injunctions.
However, due to the fact that the court was unable to confirm the information on the place of registration of the defendant for a long time, since no answers to a number of requests came, the case consideration went beyond the 90-day period, and the restrictions on the domain name were removed, so the defendant took advantage of the situation and transferred the right to administration to another person.
Due to the fact that the court obtained the response to the request to the effect that the defendant was registered neither in the city of Moscow nor in the Moscow Region, the court, on the grounds that the claimant had not submitted reliable information on the existence and whereabouts of the defendant, found it possible to leave the claim without consideration.
The claimant had to start the process anew and had to file a suit against the new administrator with a court of general jurisdiction.
Thus, the initial failure of the court to apply interlocutory injunctions resulted in the consideration of the dispute during one year in total.
The courts should have taken into account the Information on the Issues Arising in the Examination of Domain Disputes, approved by decision No. SP-21/4 of the Presidium of the Intellectual Property Rights Court of 28.03.2014, which explains that the evidence from the claimant about the presence of its right to the result of intellectual activity or means of individualization, as well as its violation and justification of the reason for applying with the claim on application of interlocutory injunctions is enough to impose interlocutory injunctions.
At the same time, this Information notes expressly that taking into account high circulability of domain names, the courts must not demand to present separate proofs to the effect that the failure to take interlocutory injunctions may make it difficult or impossible to enforce a judicial order on the merits.