Using a Business Name in a Domain Name

A brand name is one of the key means of individualization of a legal entity in civil circulation. At the same time, with the development of the digital economy, the use of means of individualization on the Internet, and primarily in domain names, is of particular importance.

In this regard, more and more court cases are raised where the issue of using a company name in domain names similar to it is raised. The peculiarity of such cases is that until now the Russian legislation does not establish an independent legal regime for a domain name as an object of intellectual property. In this regard, the question of the admissibility and limits of the use of a company name in a domain name is of particular relevance.

Brand name

Let's start with the fact that in accordance with paragraph 1 of Article 54 of the Civil Code of the Russian Federation, a legal entity has its own name, containing an indication of its organizational and legal form.

By virtue of Clause 1 of Article 1473 of the Civil Code of the Russian Federation, a legal entity that is a commercial organization acts in civil circulation under its Firm Name, which is defined in its constituent documents and is included in the Unified State Register of Legal Entities during the state registration of legal entities.

In accordance with Clause 1 of Article 1474 of the Civil Code of the Russian Federation, a legal entity has the exclusive right to use its Firm Name as a means of individualization in any way that does not contradict the law (exclusive right to a Firm Name), including by indicating it on signboards, letterheads, invoices and other documentation, in announcements and advertisements, on goods or their packaging, on the Internet.

At the same time, abbreviated Firm Names, as well as Firm Names in the languages of the peoples of the Russian Federation and foreign languages, may also be protected by the exclusive right to the Firm Name, provided that they are included in the Unified State Register of Legal Entities.

In accordance with Article 1475 of the Civil Code of the Russian Federation, the exclusive right to a Firm Name included in the Unified State Register of Legal Entities arises from the date of state registration of a legal entity.

Similar provisions are specified in paragraphs 146, 151 of Resolution No 10.

At the same time, the Civil Code of the Russian Federation does not provide for any special registration of a firm name specified in the constituent documents of a legal entity.

Consequently, the above provisions link the protection of the exclusive right to use a Firm Name with the moment of state registration of a legal entity, and not with the moment when the legal entity has started the relevant activity.

These rules of law correspond to the provisions of the Paris Convention for the Protection of Industrial Property of 20.03.1883, which provides for the obligation of states that have joined it to protect, among other things, trade names.

It follows from the above legal norms that a legal entity that has the exclusive right to a Firm Name has the right to use it in any way that does not contradict the law. It also follows from the literal interpretation of this provision that the list given in it is not exhaustive.

As a result, a commercial organization has the right to indicate its Firm Name in a domain name on the Internet and prohibit other domain owners from using a designation identical or confusingly similar to the Firm Name in domain names.

This legal position was reflected in the resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation dated 08.12.2009 in case No A40-53937/2008.

Domain name

A domain name includes a set of characters for redirecting to a specific resource on the Internet. As it was noted earlier, despite long discussions, the Russian legislator has not yet classified a domain name as an intellectual property object, although this object, of course, has an economic value for participants in civil circulation and causes many disputes related to them.

The absence of recognition of exclusive rights to domain names establishes the priority of named means of individualization over them, but the fair use of a domain name also plays a role in the collision of such objects.

Protection of exclusive rights to a brand name

In accordance with paragraph 1 of Article 1229 of the Civil Code of the Russian Federation, a citizen or a legal entity that has the exclusive right to the result of intellectual activity or to the means of individualization (the right holder) has the right to use such result or such means at their discretion in any way that does not contradict the law.

The right holder may dispose of the exclusive right to the result of intellectual activity or to the means of individualization (Article 1233), unless otherwise provided for by the Code.

The right holder may, at his discretion, allow or prohibit other persons from using the result of intellectual activity or means of individualization. The absence of a prohibition is not considered consent (permission).

Other persons may not use the corresponding result of intellectual activity or means of individualization without the consent of the right holder, except in cases provided for by the Civil Code of the Russian Federation.

In accordance with Article 1250 of the Civil Code of the Russian Federation, intellectual rights are protected by the methods provided for by the Code, taking into account the essence of the violated right and the consequences of the violation of this right.

By virtue of the provisions of Article 12 of the Civil Code of the Russian Federation, the protection of civil rights is carried out, among other things, by suppressing actions that violate the right or create a threat of its violation

Article 1252 of the Civil Code of the Russian Federation provides that 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; for compensation for losses - against the person who illegally used the result of intellectual activity or the means of individualization without entering into an agreement with the right holder (non-contractual use) or otherwise violating his exclusive right and causing damage to him.

In the event of a collision between a Firm Name and a domain name, judicial practice proceeds from the fact that the clarifications of the Plenum of the Supreme Court of the Russian Federation concerning the use of a trademark in a domain name can also be applied to cases of protection of the exclusive right to a Firm Name against the use by another person of a similar designation in the domain name and/or on the website.

Therefore, in this case, the legal position set forth in 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" (hereinafter referred to as Resolution No 10) is relevant, according to which the requirement to suppress the violation (subparagraph 2 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation) expressed in the illegal use of domain names identical or confusingly similar to the trademark (subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code of the Russian Federation), may be filed in the form of a request to prohibit the use of a domain name in a certain way (for example, an obligation to remove information about specific types of goods on the relevant site or to stop addressing to this site).

As a general rule, the infringement 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 that are similar to those for which legal protection has been granted to this trademark (paragraph 158 of Resolution No 10).

Clause 158 of Resolution No 10 also clarifies that the actions of the administrator to acquire the right to a domain name (including taking into account the circumstances of its subsequent use) may be recognized as an act of unfair competition. In this case, based on the purposes of registration of the domain name, such registration itself may be recognized as an infringement of the exclusive right to the trademark. name, the court may satisfy the requirement to prohibit the use (administration) of the domain name.

Taking into account the above legal regulation, the subject of proof in the present case includes the establishment of the moment of occurrence of the verbal designations being compared; identity or similarity of opposing verbal designations; carrying out similar activities, as a result of which there is a threat of confusion and misleading consumers or counterparties.

A similar legal position is set out in the rulings of the Intellectual Property Court dated 24.06.2019 in case No A56-56101/2017, dated 12.02.2019 in case No A60-23265/2018, dated 01.07.2021 in case No A40-73188/2020.

At the same time, the Intellectual Property Court in its ruling dated 01.07.2021 in case No A40-73188/2020 noted that the argument of the appellant about the erroneous conclusion of the courts about the identity of the types of activities carried out by the parties cannot be taken into account, since in this case it was not necessary to establish the identity of the types of activities. At the same time, the provisions of paragraph 3 of Article 1474 of the Civil Code of the Russian Federation, indicating the need to establish the similarity of the types of activities carried out by the parties are not subject to application in this dispute, since this rule concerns cases of collision of Firm Names of legal entities with each other.

Meanwhile, in the case under consideration, the claim was filed in defense of the exclusive right to the Firm Name against the registration and use by the defendant of a confusingly similar domain name in the course of medical activities. This claim is based on the general provisions of Articles 12 and 1252 of the Civil Code of the Russian Federation.

The above is important because, despite the fact that the domain name is not an intellectual property object, the courts take the side of the domain name administrator, dismissing the claim of the right holder of the business name with references, for example, to the earlier registration of the domain name in comparison with the brand name of the right holder (for example, the decision of the Intellectual Property Court dated 25.07.2023 in case No A40-194779/2022).

What about non-profit organizations?

In this context, case No A40-57187/2023 is of interest, in which the Federal Penitentiary Service of the Russian Federation filed a lawsuit against a legal entity and an individual to prohibit the use and exclude the use of the abbreviations "FSIN" and "fsin" in the domain names of https://fsinpokupka.ru/, https://fsin-mag.ru/, which provided services of an Internet service for the formation and delivery of orders for persons held in the institutions of the Federal Penitentiary Service of Russia. The plaintiff considered that since the designation "fsin" is a transliteration of the abbreviation "FSIN", which, in turn, is an integral part of the official abbreviated name of the Federal Penitentiary Service of Russia and is used in the domain name of the official website of the https://fsin.gov.ru/ posted on the Internet, this causes a violation of the plaintiff's exclusive right to the company name.

Meanwhile, with regard to the claims, the Intellectual Property Court, as a court of cassation, recalled that a firm name, as a means of individualization of a legal entity, can arise only from a legal entity operating in the organizational and legal form of a commercial organization. In turn, the Federal Penitentiary Service is a federal executive body, and is also registered as a legal entity, however, as a non-profit organization.

The names of non-profit organizations (Article 4 of the Law on Non-Profit Organizations) are not a means of individualization of legal entities in the sense of the provisions of Part Four of the Civil Code of the Russian Federation, they are not subject to the legal protection established by Paragraph 1 of Chapter 76 of the Civil Code of the Russian Federation.

In this regard, a state body and a non-profit organization, by virtue of the above provisions of civil legislation, cannot have exclusive rights to a Firm Name, since such participants in civil circulation are not commercial organizations.

Meanwhile, the Intellectual Property Court also added that the designation used in domain names is a transliteration of the abbreviation of the official abbreviated name of a state body, which is confusingly similar to it and can mislead consumers as to the affiliation of the person providing services to the relevant state body.

In this regard, the violated rights of the plaintiff can be protected, including taking into account the explanations set out in paragraph 4 of paragraph 147 of Resolution No 10.

Thus, according to paragraph 4 of paragraph 147 of Resolution No 10, the plaintiff's right to the name of a non-profit organization may be protected from the actions of third parties that are an act of unfair competition or abuse of right, on the basis of the provisions of Article 10 of the Civil Code of the Russian Federation, Federal Law of 26.07.2006 No 135 "On Protection of Competition", Article 10.bis of the Paris Convention for the Protection of Industrial Property of 20.03.1883. In addition, the name of a non-profit organization may be granted legal protection as a commercial designation in the cases provided for by paragraph 4 of Chapter 76 of the Civil Code of the Russian Federation.

Thus, despite the fact that non-profit organizations do not have the opportunity to have exclusive rights to a Firm Name, the current legislation enshrines a number of provisions protecting their rights.

Despite the fact that the current civil legislation gives priority to a firm name, where its use in a domain name may potentially violate the exclusive rights of the right holder, the court, considering such a category of disputes, nevertheless, proceeds from the specific circumstances of the case and the evidence available in the case, which determines the protection of the rights of each participant in civil transactions.