A domain name as a subject matter of the law
A number of the disputes involving domain names is growing more and more every day, and an issue on the legal nature of a domain name arises even more often, in particular, what rights the domain name confers on its owner and how the domain name can be a participant in the civil legal relations.
The domain name individualizes in a specific way the website, where the addressing is exercised to. Despite this fact, the domain name shall not be a result of the intellectual activities or a means of individualization, which exhaustive list is contained in Paragraph 1 of Article 1225 of the Civil Code of the Russian Federation (hereinafter referred to as the C.C.R.F.).
The results of the intellectual activities and the means of individualization protected according to this order, except the domain names, shall not include, in particular, the names of non-commercial organizations (Article 4 of Federal Law of 12.01.1996 No. 7-FZ “On Non-Commercial Organizations”), the names of the mass media (Article 2 of Law of the Russian Federation of 27.12.1991 No. 2124-1 “On Mass Media”).
The domain name shall not be granted the legal protection on the grounds and according to the order stipulated by Part Four of the C.C.R.F. The right to the domain name is subject to be protected on the grounds of the general provisions of the C.C.R.F. on the ways to defend the civil rights.
In accordance with the provisions of Article 128 of the C.C.R.F., the subject matters of the civil rights include things, including money and securities, other property, including the property rights; works and services; the protected results of the intellectual activities and the equated to them means of individualization (intellectual property); intangible benefits.
Taking into account the fact that the information technology has a certain value and can be a subject of a transaction, the domain name, the right to administer it, should be qualified as the property right, which essence is in the ability of the person, who has registered the domain name, to place on the Internet the information resource that is accessed by a user of the Internet by typing some certain characters that make up the domain name.
Moreover, according to Paragraph 57 of “GOST R 51303-2013. The National Standard of the Russian Federation. Trade. Terms and Definitions” approved by Order of the State Standard of 28.08.2013 No. 582-st (Standard), an online store shall mean a part of the trade enterprise/trade organization or the trade organization intended to provide the buyer via the Internet with the information necessary for making a purchase, including on a range of the products, the prices, the seller, the methods and the conditions for the payment and the delivery, to receive from the buyers via the Internet the messages on an intention to purchase the products, and also to ensure a possibility of delivering the products by the seller or its contractor to the address indicated by the buyer or to a self-pickup point.
A commercial designation shall be the means of individualization of the enterprise. If the point is about the online store, an individualizing function may be performed by the domain name that may coincide with the commercial designation and/or with a trademark.
The owner of the property right shall be an administrator. In accordance with the Rules for the Registration of the Domain Names in the Domain RU, the administrator is the person, who has concluded an agreement on the registration of the domain name and he carries out administering the domain, that is, he determines an order for using the domain. The right of administering exists by virtue of the agreement for the registration of the domain name and it shall be valid since the moment of the registration of the domain name during the registration period.
Administering shall include: ensuring the functioning of the server, where the website is located; maintaining the website in working order and ensuring its availability; performing the backuping of the website components and the parameters of the database setting; carrying out the organizational and technical arrangements to defend the information on the website from unauthorized access; installing the software necessary for the operation of the website, including in the event of an emergency; registering the employees serving the website, and granting the right to change the information on the website; performing a routine maintenance on the server (replacing or adding the components of the website, keeping the log backup files, controlling the availability of a free table space of the database, etc.); ensuring the placement of the information on the website; carrying out the permanent monitoring of the state of the safety system of the web services required for the correct operation of the application and the information on the website; performing the works for updating and improving the functional services of the website; amending the structure and the design of the website; other kinds of the works.
A domain administrator is an individual or an individual entrepreneur, or a legal entity, which the domain name is registered to.
The Supreme Court of the Russian Federation in Resolution of the Plenum of 23.04.2019 No. 10 “On the Application of Part Four of the Civil Code of the Russian Federation” summarized the judicial practice. It follows from the Resolution that the website owner shall determine independently the order for using the website (Paragraph 17 of Article 2 of Federal Law of July 27, 2006 No. 149-FZ “On the Information, Information Technology and the Protection of the Information”).
In the case of placing on the website the material that includes the results of the intellectual activities or the means of individualization, the burden of proving the legality of such placement shall rest with the administrator. In the absence of such proofs, it shall be presumed that the website owner is the person, who directly uses the relevant results of the intellectual activities or the means of individualization. Accordingly, the responsible for the use of the subject matters of intellectual property shall rest with the administrator.
If the website owner makes changes to the material placed by third parties on the website that contains the results of the intellectual activities or the means of individualization, resolving the issue on attributing him to the information intermediaries depends on how active role he has played in the formation of the material placed and (or) whether he has gained income directly from the illegal placement of the material. Significant processing the material and (or) gaining the above income by the website owner may point to the fact that he is not the information intermediary, but the person, who directly uses the relevant results of the intellectual activities or the means of individualization.
Unless otherwise follows from the circumstances of the case and the proofs submitted, in particular, from the information placed on the website (Part 2 of Article 10 of the above Law), it shall be presumed that the website owner shall be the administrator of the domain name that is addressing to the appropriate website.
The responsibility for the content of the information on the website shall rest with the domain administrator, as the actual use of the website resources is impossible without the participation in one form or another of the domain administrator, who is the person, who has created the correspondent technical conditions for the visitors of his Internet resource.
The administrator of the domain name shall prescribe the order for the use of the domain, bear responsibility for choosing the domain name, the possible violations of the rights of third parties related to the choice and the use of the domain name, as well as bear the risk of the damages related to such violations.
The actions of the administrator related to getting the right to the domain name (including taking into account the circumstances of its subsequent use) may be recognized as an unfair competition act. Based on the purposes of the registration of the domain name, the very registration may be recognized as the violation of the exclusive right to the trademark.
The court may satisfy the claim for compelling the cancellation of the registration of the domain name, if it is exactly getting the right to the domain name that has been recognized as the violation of the exclusive right.
The claim for suppressing the actions that violate the right to the trademark and which are expressed in the illegal use of the domain name (Subparagraph 2 of Paragraph 1 of Article 1252, Subparagraph 5 of Paragraph 2 of Article 1484 of the C.C.R.F.) may be filed against the administrator of the corresponding domain name.
The claim for the damages for the illegal use of the trademark in the domain name, as well as the claim for recovering the damages (Subparagraph 3 of Paragraph 1, Paragraph 3 of Article 1252 of the C.C.R.F.) may be filed against the administrator of the corresponding domain name and against the person, who has actually used the domain name being identical or confusingly similar to the trademark regarding the products that are homogeneous with the ones for the individualization of which the trademark has been registered. At the same time, such persons shall be jointly responsible to the right holder. If there are the appropriate grounds, the administrator of the domain name shall be entitled to file a recourse claim against the person, who has actually placed the information on the homogeneous products on the corresponding Internet resource under the disputed domain name.
According to the plaintiff’s petition, the information on the administrator of the domain name shall be required from the registrar of the domain name according to the order stipulated by Article 57 of the Civil Procedural Code of the Russian Federation, Article 66 of the Arbitration Procedural Code of the Russian Federation.
According to the claim for suppressing the actions that violate the right to the trademark and which are expressed in the illegal use of the domain name, in order to prevent causing significant damage to the applicant, the interim measures that are aimed at preserving the existing state of the relations between the parties may be applied, in particular a prohibition to the administrator to perform any actions aimed at refusing or transferring the domain name, including a replacement of the registrar, as well as a prohibition to the registrar to cancel the domain name and to transfer the rights of administering the domain name to another person.
Having analyzed the established judicial practice, it is possible to conclude that the domain name is not only the means of addressing on the Internet, but it is also the property rights related to this means that can be implemented by the administrator of the domain name.