Ways to protect a trademark in case of illegal use in domain name

The issue of the relationship between a trademark and a domain name has been repeatedly considered by many experts in the field of intellectual property. It is obvious that the legal regime of a trademark and a domain name are different, including because, unlike a domain name, a trademark in accordance with Art. 1225 of the Civil Code of the Russian Federation is granted legal protection as a means of individualization. In addition, in accordance with subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code of the Russian Federation, one of the ways to use the exclusive right to a trademark, among other things, is to place a trademark on the Internet, including in a domain name and with other addressing methods. Thus, in case of illegal use of a trademark in a domain name, the trademark owner has the right to protect his exclusive right. Consider methods for illegal use of a trademark in a domain name.

In accordance with Russian law, a 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 in respect of which this trademark has been granted legal protection, without the consent of the trademark owner. The requirement to stop the violation, which is expressed in the illegal use of domain names that are identical or confusingly similar to a trademark, can be stated in the form of a requirement to prohibit the use of a domain name in a certain way in a judicial proceeding. When considering this category of disputes, the court takes into account various circumstances: the status of the trademark owner, the use by the alleged infringer of a trademark/designation confusingly similar to a domain name without legal grounds, the repeated violation.

Thus, in case No. A40-63506/2020, the Moscow Arbitration Court satisfied the requirements to prohibit the use of a domain name, to oblige to cancel the registration of a domain name, and to recover compensation in the amount of 100,000 rubles (the decision of the court of first instance was left unchanged by the appellate and cassation instances). The domains in dispute in this case were word designations that were similar to the plaintiff's trademarks. The similar nature of services for which trademarks are registered and services for which domains are used was also taken into account. The court found that the defendants unlawfully (without the consent of the copyright holder) use the trademarks owned by the plaintiff in the disputed domain names.

As follows from the systematic interpretation of the norms of international law and the provisions of the Civil Code of the Russian Federation, the national principle of legal protection is applied to trademarks, assuming that exclusive rights to these intellectual property objects registered in the territory of the Russian Federation are recognized and subject to legal protection within the established boundaries of this state. At the same time, in disputes over domain names that are identical or confusingly similar to trademarks, trade names, the court, when determining the circumstances of the use (administration, delegation and other actions) of domain names, may use the provisions formulated in the Uniform Dispute Resolution Policy on UDRP domain names (UDRP - Uniform Domain Name Dispute Resolution Policy), approved on October 24, 1999 by the ICANN Assigned Domain Names and IP Numbers Corporation (hereinafter referred to as the “Policy”).

However, in addition to the judicial procedure, there is an administrative procedure for protecting a trademark in case of illegal use in a domain name, namely, the consideration of domain disputes in specialized international arbitration centers in accordance with the UDRP Policy. Such practices are governed by the aforementioned Policy, the Uniform Domain Name Dispute Resolution Rules adopted on September 28, 2013 by ICANN Corporation of Domain Names and IP Addresses and effective July 31, 2015 (hereinafter referred to as the "Rules") and the Supplementary Rules for Resolution domain name disputes effective July 31, 2015.

There are currently six entities authorized by ICANN to resolve domain disputes under the UDRP: Arab Center for Domain Name Dispute Resolution (ACDR); Asian Domain Name Dispute Resolution Center (ADNDRC); Canadian International Domain Name Dispute Resolution Center (CIIDRC); Czech Court of Arbitration, Arbitration Center for Internet Disputes; National Arbitration Forum (USA); World Intellectual Property Organization Center for Arbitration and Mediation (WIPO Center).

This article will discuss the specifics of administrative proceedings in relation to domain names in the WIPO Arbitration and Mediation Center.

Pursuant to paragraph 5 of the Policy, an individual may initiate administrative proceedings before a WIPO Center if (i) the domain name is identical or confusingly similar to a trademark or service mark to which the applicant has rights; (ii) the infringer has no rights or legitimate interests in the domain name; (iii) the domain name has been registered and is being used in bad faith. The subject of such a complaint may be one or more domains, the alleged administrators of which are one person. In addition, the applicant may also indicate several trademarks on the basis of which the claim is filed ((viii), (b), 3 of the Policy).

If the first (top) level domain is international (for example, .com , .net) or generic (for example, .aero , .biz , .name) , then dispute resolution is carried out using administrative procedures developed by WIPO and ICANN in accordance with the procedure UDRP. If the dispute concerns the Russian national domain zone (.RU , .SU, .РФ, as well as top-level domains, which are managed by legal entities registered in the Russian Federation, which are registered owners of databases of these domains in international organizations for the distribution of network addresses and domain names [1]), in which case the dispute is subject to consideration by a Russian court.

The process of administrative resolution of domain disputes by the WIPO Center is the submission by the applicant of a complaint to the WIPO Center by any individual or legal entity in electronic form. The complaint is then registered on the WIPO website, a case number is assigned, and a legal affairs manager is appointed to handle correspondence between the parties to the dispute. The commencement of the administrative proceedings will be the date on which the WIPO Center sends the complaint to the respondent. After receiving a response to the complaint from the defendant, an administrative commission is appointed and the arbitrator / arbitrators consider the dispute that has arisen.

If the submitted complaint complies with the formal requirements, the legal affairs manager informs the complainant and sends a request to the registrar of the disputed domain name to obtain (in the case when information about the domain name administrator is not known) or confirm information about the domain name administrator. This obligation of the WIPO Center is an indisputable advantage of the administrative procedure, as it significantly saves the applicant's costs. If the filed complaint does not meet the formal requirements, as well as in case of obtaining information about the domain name administrator, if they were not known, the legal affairs manager offers the applicant to supplement / eliminate the violations in the filed complaint within a period not exceeding five calendar days. If during this period the applicant does not eliminate the proposed obstacles within five days, the complaint will be considered withdrawn.

It is also convenient for the applicant to choose the language in which the administrative proceedings will be conducted. In accordance with paragraph 11 of the Rules, unless the parties agree otherwise, the default language of proceedings is the language of the domain name registration agreement, provided that the panel may determine otherwise. However, in some cases it may be necessary to use a language other than the language of the registration agreement. Such cases include: (i) evidence that the defendant will not be able to understand the language of the complaint; (ii) the language/graphics of the domain name, in particular if it matches the applicant's mark language; (iii) any content on the web page under the disputed domain name; (iv) previous cases involving the defendant in a particular language; (v) correspondence between the parties; (vi) potential unfairness or undue delay in the plaintiff's translation of the complaint; (vii) evidence of other domain names registered to the applicant, used or corresponding to a particular language, (viii) in cases involving multiple domain names.

In my opinion, one of the most interesting features of the administrative review by the WIPO Center is that the applicant and the respondent are free to appoint an arbitrator of their choice. When filing a complaint, the applicant has the right to choose the number of arbitrators who will consider the dispute: one or three. Moreover, if the applicant chooses three arbitrators, he can also nominate three candidates from the list of members of candidate arbitrators of WIPO, one of whom will be selected by the WIPO Center to consider the dispute ((iv), (b), 3 of the Policy). If the applicant in the complaint indicates the consideration of the dispute by one arbitrator, and the defendant insists on the consideration of the dispute by three arbitrators, then in this case the defendant will need to pay an additional fee and indicate the alleged arbitrators. In this case, the WIPO Center will nominate one candidate of the Applicant's choice, a second of the Respondent's choice, and a third of its own discretion.

The next feature of the consideration of the case in the administrative procedure is the absentee procedure for considering the complaint. This procedure is undoubtedly convenient and contributes to a fairly quick consideration of the dispute. According to paragraph 15 of the Rules, the arbitrator considers the case solely on the basis of documents and explanations submitted by the parties. Additional documents can only be provided upon request of the WIPO Center.

Another feature of the consideration of a complaint by the WIPO Center is the relatively short time limit set for this procedure. In total, from the moment the complaint is filed until the decision is made by the administrative commission, a period of two to three months is set, depending on the moment the respondent provides a response (the respondent is given a period not exceeding twenty calendar days to provide a response). For comparison, the procedural term for considering a domain dispute by a Russian court in compliance with the pre-trial procedure (with subsequent presentation of material claims), including two instances, will be at best six months.

In accordance with paragraph 4 of the Policy, at its discretion, the applicant has the right to demand either to transfer the disputed domain name to the applicant, or to oblige the registrar to cancel the registration of the disputed domain name. When considering a similar case in a Russian court, the plaintiff, also in accordance with Article 1515 of the Civil Code of the Russian Federation, has the right to demand, at his choice, from the violator, instead of compensation for losses, payment of compensation in the amount of ten thousand to five million rubles, determined at the discretion of the court based on the nature of the violation. When filing a complaint with the WIPO Center, the complainant does not have the opportunity to seek compensation from the defendant. In addition, when considering a case in a Russian court, the party in whose favor the judicial act was adopted has the right to recover legal costs from the other party.

When filing a complaint with the WIPO Center, the applicant must prove three facts in total: 1) the disputed domain name is identical or confusingly similar to the applicant's trademark/trademarks; 2) the disputed domain name administrator has no rights and legitimate interests in relation to the domain name; 3) the disputed domain name has been registered and is being used in bad faith ((ix), (b), 3 of the Policy). The defendant, in response to the filed complaint, may indicate the following facts: 1) the defendant used the disputed domain name in good faith before filing the corresponding complaint; 2) the defendant uses the disputed domain name for non-commercial purposes and does not pursue the goal of deriving profit; 3) the defendant is widely known among consumers.

It should also be noted that the procedure discussed above does not prevent the possibility of considering a dispute about the same domain name in a Russian court both before and after the dispute is considered in an administrative procedure.

Thus, the administrative way to protect the right to a trademark in case of illegal use in a domain name in the WIPO Center definitely has both its pluses and minuses. In this regard, the choice of a way to protect the violated right of a person remains at his discretion.

Source:

1.Order of Roskomnadzor No. 216 dated July 29, 2019 “On determining the list of groups of domain names that make up the Russian national domain zone”.