Abstractness of claims to prohibit the use of a trademark in a domain name

In today's digital world, the placement of trademarks in domain names is becoming an integral part of a company's branding strategy and online presence.

In this regard, the number of unscrupulous persons who parasitize on the business reputation of well-known market participants by securing domain names that are confusingly similar to popular brands is also increasing, which, accordingly, leads to an increase in the number of claims to prohibit the use of trademarks in a domain name.

However, when preparing a statement of claim for an injunction, it is important to avoid the abstractness of the claim, since this is fraught with a refusal to satisfy them.

In accordance with subparagraph 2 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation, the protection of exclusive rights to the results of intellectual activity and to the means of individualization is carried out, in particular, by filing a claim for the suppression of actions that violate the right or create a threat of its violation against the person committing such actions or making the necessary preparations for them, as well as against other persons, in the manner provided for by the said Code. which can stop such actions.

In practice, claims for the prohibition of the use of a trademark in a domain name are made directly to the person administering the domain name, since the administrator independently chooses the domain name and is responsible for possible violations of the rights of third parties related to the selection and use of the domain name, as well as bears the risk of losses associated with such violations.

At the same time, such a requirement can be satisfied only if the unlawful behavior of a particular person has not yet been completed or there is a threat of violation of the right.

In accordance with subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code of the Russian Federation, a separate way of using a trademark is its placement on the Internet, including in a domain name and other methods of addressing.

According to paragraph 158 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019 No. 10 "On the Application of Part Four of the Civil Code of the Russian Federation, "as a general rule, the violation of the exclusive right to a trademark is the actual use of a domain name that is identical or confusingly similar to a trademark in relation to goods similar to those for which legal protection of this trademark is granted».

Paragraph 57 of Resolution No10 states that "the requirements for a general ban on a specific person in the future to use the result of intellectual activity or a means of individualization (for example, a ban on posting information in information and telecommunication networks, including the Internet) are also not subject to satisfaction. Such a prohibition is established directly by law (paragraph three of paragraph 1 of Article 1229 of the Civil Code of the Russian Federation)."

In addition, in accordance with the position expressed by the Supreme Court of the Russian Federation in its Ruling dated 10.06.2019 No. 309-ES19-8519 in case No. A76-40637/2017, "abstract requirements for a general ban on a specific person for the future to use the result of intellectual activity or means of individualization at any time by virtue of law are not subject to satisfaction, since the satisfaction of such a claim entails a violation of the principle of enforceability of a judicial act. Bringing the defendant to responsibility for each subsequent offense is possible only by filing a new claim, and not by presenting for execution a writ of execution containing an abstract prohibition."

Thus, based on the meaning of the above provisions in their interconnection, it can be concluded that abstract requirements for the prohibition of the use of a trademark in a domain name cannot be satisfied regardless of specific goods and/or services for which the domain name is used.

An exception is the infringement of the exclusive right to a well-known trademark, which may occur when such a trademark is used in a domain name by itself, without reference to certain goods/services.

This approach is in line with current judicial practice.

For example, the Presidium of the Intellectual Property Rights Court, in its ruling dated 16.10.2023 in case No. A54-3009/2021, dismissing the cassation appeal, stated the following: "when refusing to satisfy the claim to prohibit TEK-SYSTEMS from using the verbal designation "RIZUR" ("RIZUR") and the confusingly similar designations "RIZUR NBK", "RIZUR-KZ" by any means, the courts indicated that this requirement is aimed at an abstract prohibition, contradicts the current legislation and is subject to rejection, since it goes beyond the powers granted to the plaintiff as the owner of the exclusive right to the trademark."

Canceling the judicial acts of the courts of first instance and appeal in case No. A41-68664/2022, the Intellectual Property Court in its ruling dated 29.08.2023 noted that "... the reference in the operative part of the decision of the court of first instance to the establishment of a ban on the use of a designation confusingly similar to the trademark under the certificate of the Russian Federation No. 238952 on the main page of the https://isoroc.moscow/ website on the Internet, in the domain name isoroc.moscow, without establishing the circumstances of such use, in relation to any goods and services similar to those goods and services, cannot be recognized as justified, in respect of which the disputed trademark is registered.

In essence, such a prohibition cannot be sufficiently definite, since it implies the illegality of the use not only of a specific means of individualization, but also of any other designation, in the absence of specific criteria for its confusing similarity with the trademark in question, which is unacceptable."

In addition, the requirement to prohibit the use of a designation confusingly similar to a trademark in relation to "homogeneous goods" without their substantive specification is abstract.

Thus, the Intellectual Property Court, by its ruling dated 27.09.2021 in case A40-237050/2020, reversed the acts of the courts of first instance and appellate instance, stating that "the Intellectual Property Court agrees with the arguments of the appellants that the appealed judicial acts do not contain the basis for the conclusions that both defendants have proven the use of the disputed designation in relation to any specific goods of the 6th class of the Nice Classification.

At the same time, the appealed judicial acts do not indicate which goods produced, offered and sold by the defendants are similar to those in respect of which the disputed trademark is registered."

Thus, it should be emphasized that both judicial practice and current legislation unequivocally indicate the need for a more precise formulation of requirements when filing claims to prohibit the use of trademarks in domain names.

Satisfaction of abstract claims can potentially lead to a violation of the principle of enforceability of a judicial act, which, in turn, creates legal uncertainty.