The number of the domain disputes considered by the courts increases every year, what contributes to the formation of the judicial practice. The motivation of the judicial acts is already becoming quite predictable.
The uniformity in the courts’ approach to the resolution of the domain disputes allows the representatives to work out automatically the algorithm of gathering proofs and the sequence of the procedural actions. But not everything can always be predicted and planned.
From time to time, on the way to obtain a court decision on banning the use of a trademark in a domain name and on annulling it, the circumstances may arise that hinder the further steps of a right holder.
This article offers to consider one of such obstacles – an indication of an invalid address of an administrator, while registering the domain name.
Let us model the following situation. The trademark right holder has found a violation of the exclusive right to the trademark on the Internet. The violation consists in the use of a confusingly similar designation on the website and in the domain name. The activity that is being carried out on the website is homogeneous to the products/services for which the trademark is registered.
Both the person, the information on whom is directly posted on the website, and the domain name administrator, who actually provides a possibility for posting a content, can be recognized as the violators of the rights to the trademark.
In the situation under which the trademark is used in the domain name, the domain name administrator is also involved as a defendant in the case.
In accordance with Paragraph 1.1 of the Rules of the Domain Names Registration in the Domains RU and РФ (hereinafter referred to as the Rules), the domain name administrator shall be a person in whose name the symbolic designation (domain name) intended for the network addressing is registered.
The domain administrator, as the person who has concluded an agreement on the domain name registration carries out the administration of the domain, that is, he determines the procedure for using the domain. The responsibility for the content of the information on the website is born by the very domain administrator, since using the resources of the website without his control is impossible, as it is the very domain name administrator, who prescribes the procedure for the use of the domain, bears responsiblity for choosing the domain name, the possible violations of the rights of third parties related to the choice and use of the domain name, as well as he bears the risk of the losses related to such violations.
The domain name can be registered both to a legal entity and to a person, the information on which is, as a rule, hidden and it is not publicly available.
The information on the administrator can be obtained by, in particular, sending a lawyer's request to the registrar and receiving a response to it.
Having received the registrar's response, the right holder may encounter the situation, when the address indicated by the registrar is invalid. Thus, for example, the street is indicated that is not in the city, or the house is indicated that is not at this street.
The inclusion by the registrar of the invalid information on the domain name administrator in the Registry, the impossibility of detecting the proper address of the domain name administrator and, as a consequence, the impossibility of notifying the defendant to be summoned to the court, can serve as an obstacle to implement the right to the judicial defence stipulated by the legislation of the Russian Federation.
What should one do? Should one stop and reconcile himself with the ongoing violation? No, in the chain of the violation of the right to the trademark, namely, between the right holder and the administrator, we see a sort of a catalyst – a registrar/hosting provider.
We assume that the registrar/hosting provider is an information intermediary, who does not bear responsibility for the violation of the exclusive right to the trademark, since it is the administrator, who chooses a domain name and posts a similar designation on the website, and the information intermediary only provides such a possibility and carries out access to the posted information.
The Civil Code of the Russian Federation (C.C.R.F.) establishes restrictions, namely, certain conditions, the non-observance of which may result in bringing the information mediator to responsibility.
In accordance with Paragraph 2 of Article 1253.1 of the C.C.R.F., “The information intermediary carrying out a transfer of the material in the information and telecommunications network shall not be responsible for the violation of the intellectual rights resulting from this transfer, while observing simultaneously the following conditions:
1) he is not an initiator of this transfer and he does not specify the recipient of the indicated material;
2) he does not change the indicated material, while providing the telecommunication services, except for the changes carried out to ensure the technologic process of transferring the material;
3) he did not know and should not have known that the use of the corresponding result of the intellectual activity or the means of individualization by the person who had initiated the transfer of the material containing the corresponding result of the intellectual activity or the means of individualization was illegal.”
In accordance with Paragraph 3 of Article 1253.1 of the C.C.R.F. “The information intermediary that provides a possibility of posting the material in the information and telecommunications network shall not bear responsiblity for the violation of the intellectual rights occurred due to posting the material in the information and telecommunications network by a third party or according to his instruction, while observing simultaneously the following conditions by the information intermediary:
1) he has not know and should not have known that the use of the corresponding result of the intellectual activity or the means of individualization contained in such material was illegal;
2) in case of receiving a statement in writing from the right holder on the violation of the intellectual rights with an indication of the website's page and (or) the network address on the Internet, where such material is posted, he has promptly undertaken the necessary and sufficient measures for the termination of the violation of the intellectual rights. The list of the necessary and sufficient measures and the procedure for carrying out them can be established by the law.”
The first step to obtain the possibility of bringing the information intermediary to responsibility is to bring to him the information that the information posted on the website and the domain contain the trademark. The right holder has not granted to the administrator his consent to the use the trademark.
The right holder may believe the domain name registration is connected with the unfair actions of the administrator and it has been made in violation of the the Rules of the Domain Names Registration, as the administrator has submitted the invalid information about himself, while registering, and he has not submitted a response to the registrar's request within the prescribed period.
In support of this assertion, it can be indicated that the right holder of the trademark is a person, who has the legal rights and interests with respect to the domain name, and the administrator is not the right holder of the intellectual property subject matters, in which the similar designation would be used. At the same time, the administrator has not the rights and legal interests with respect to this designation.
Carrying out the administration of the disputed domain, the administrator hinders the right holder from using the trademark at his own discretion in full, as by virtue of the provisions of the Rules of the Domain Names Registration in Domains .RU and .РФ, the right holder does not have a possibility to register in zone .РФ of the Internet a domain with the use of his trademark that is identical to the disputed domain, it creates an obstacle to the right holder for posting the information about him and his products using his trademark in the said domain of the Russian zone of the Internet.
Thus, the actions of using the protected trademark in the domain name can be subject to qualification as an unfair competition act.
In addition, the right holder is entitled to state that the registrar has initiated the procedure for identifying the administrator.
In accordance with Paragraph 2.5 of the Rules “The user (administrator) shall be obliged to provide the registrar with the valid information in the scope and pursuant to the procedure established by the Rules and the agreement, as well as to notify the registrar promptly on the change of the information provided to him and to provide the registrar with supporting documents at his request.”
The registrar shall be entitled to verify the information being provided by the administrator or being stored in the Registry, which relates to the domain name or the administrator by requesting the clarifications and/or the supporting documents from the administrator (Paragraph 9.3.4 of the Rules.) The administrator shall be obliged to fulfill the request for providing the clarifications and the documents within seven days from the date of sending the corresponding request by the registrar. At the administrator’s motivated request, the registrar shall be entitled to establish an additional period for the provision of supporting documents (Paragraph 9.3.5. of the Rules).
In accordance with Paragraph 9.3.7. of the Rules “If the administrator fails to fulfill the request for providing the information and the documents within the prescribed period, the delegation of the domain name shall be terminated, and the administrator’s applications relating to the domain name (including the applications for prolonging the registration) shall not be carried out until the moment the request is carried out.”
In accordance with Paragraph 9.3.8. of the Rules “In case of detecting the invalid information intended for the identification of the administrator, the registrar shall be entitled to terminate the delegation immediately, before sending the request by way of sending a notification on that fact to the administrator by e-mail.”
The domain delegation is posting and storing the information on the domain name and its corresponding DNS servers on the DNS servers of the top-level domain, what is a prerequisite for the operation of the domain addressing on the Internet. However, the termination of the delegation does not entail the removal of the website from the world wide web, the website continues to operate, the right holder still does not have a possibility to register the domain name to himself and to use it as a means of promoting his products. Consequently, the exclusive rights to the trademark continue to be violated.
So, having achieved the termination of the delegation, the right holder has not achieved the goal, the domain is not canceled. But the first step has been taken – the registrar (he is often a hosting provider) has been informed on the violation. Pursuant to Paragraph 8.1., the registrar shall be entitled to cancel the registration of the domain name, and in case of a refusal to cancel the domain name, the right holder shall have a possibility to apply to the court on bringing the registrar/hosting provider to responsibility.
Based on the fact that by implication of Article 1253.1 of the C.C.R.F. in cases on the violation of the intellectual rights in the information and telecommunications network Internet, the information intermediary shall bear responsibility in the cases, if he knows about the violation of the exclusive right and does not undertake the measures to terminate the violations. The right holder may apply to the court. But is this particular norm a basis for the defence of the exclusive right?
In accordance with Paragraph 1 of Article 1252 of the C.C.R.F., “The defence of the exclusive rights to the results of the intellectual activity and to the means of individualization shall be carried out, in particular, by imposing the requirement pursuant to the procedure stipulated by the present Code:
2) on the suppression of the actions that violate the law or create a threat of its violation, – to the person who commits such actions or who carries out the necessary preparations for them, as well as to other persons, who can suppress such actions;”
The above norm allows imposing the requirements both to the person, who has committed the action that violates the Plaintiff’s exclusive right, and to any other person, who can suppress such action to which the domain name registrar relates.
The right holder can choose a way of defending the exclusive right by imposing the requirements to the registrar/hosting provider.
In accordance with Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation No. 445/13 of June 4, 2013, Decision of the Supreme Arbitration Court of the Russian Federation No. VAS-445/13 of March 13, 2013, along with the ways of protecting the exclusive rights of the right holders to the means of individualization listed in Article 1252 of the Civil Code of the Russian Federation, other ways of defending the said rights may also be applied, which are aimed at suppressing the actions that violate the law or create a threat of its violation, to which the cancellation of the registration can be referred. The requirement on the cancellation of the domain registration is a special way of the defence the violated right.
The Rules grant to the registrar the right to suppress the actions that violate the rights of any third party including by terminating the delegation and cancelling the domain name.
The provisions of Subparagraph 2 of Paragraph 1 of Article 1252 of the C.C.R.F., as stated above, shall be applicable not only to the person, who commits such actions or carries out the necessary preparations for them, but also to other persons, who can suppress such actions (the domain registrar, the hosting provider). This legal position found its support in the judicial practice (Resolution of the Intellectual Property Court of September 30, 2015 in case No. A40-133652/2014, Resolution of the Intellectual Property Court of July 14, 2014 in case No. А40-119044/2013).
In case No. А56-108483/2017, the court not only satisfied the requirement for cancelling the domain name, but it also recovered compensation for the illegal use of the trademark from the registrar/hosting provider. The Intellectual Property Court, by its Resolution of January 31, 2019, upheld the judicial acts of the Court of First Instance and the Court of Appeal.
In this case, Article 1252 of the C.C.R.F. serves the basis for applying to the court. The Intellectual Property Court in its Decision of July 4, 2018 in case No. А40-132026/2017 indicated, “At the same time, the Court of Cassation notes that the application by the courts to the company “Registrator R01” of the provisions of Article 1253.1 of the C.C.R.F.does not have a legal effect in the present case, as the basis of the statement of claim to this defendant were the provisions of Subparagraph 2 of Paragraph 1 of Article 1252 of the C.C.R.F., which, as indicated above, shall be applied not only to the person, who commits such actions or carries out the necessary preparations for them, but also to other persons, who may suppress such actions (in the present case – the domain registrar).”
Resolving the issue of whether it is possible to make the domain registrar terminate the delegation of the domain or cancel it within the framework of the statement of claim on the suppression of the violation of the exclusive rights, if the domain name is registered to a non-existent person, we believe it is possible to agree with the position that the measures of that kind may be applied. In this case, one can speak not about bringing the domain registrar to responsibility, but about applying the measures of the intellectual rights defence. And such measures of the defence, in principle, may be applied, amongst other things, to the domains registrar.