IPR CourtClarified Special Features of Claims in Domain Disputes and Criteria for Evaluating Actions of Domain Owner

The Court for Intellectual Property Rights (hereinafter the IPR Court) considered the case on

the claim of the trademark owner against the company ( a registrar of domain names) and the

owner of the domain name in which the trademark was used. The claim was not satisfied due to

improper claims, as well as due to the existence of a legitimate interest of the domain name

owner.

The right holder of the trademark No. 591658 “Домовой” with priority of December 24, 2014

filed a lawsuit to cancel the registration of the domain namewww.domovoy.ruand to prohibit the

registration of this domain name for all persons except the plaintiff. The defendants in the case

were the domain name registrar company and the current owner of the domain name.

Denying the claim against the owner of the domain, the courts of three instances proceeded from

the point that the fact of infringement of the exclusive right to trademark registration of the

disputed domain name is not proven.

It was taken into account that the domain name was registered much earlier than the priority date

of the trademark. The domain name was used to inform consumers about the goods sold, and that

the owner of the domain is the right holder of the trademark No. 742498 “ДОМОВОЙ” with a

priority date of November 25, 2019 and the owner of the corresponding company name.

The lawsuit against the registrar of domain names was also denied, despite the plaintiff’s

argument that it was able to terminate the offense and cancel the registration of the disputed

domain name. The courts stressed that the requirement to ban the registration of a particular

domain name in respect of all persons other than the plaintiff is a general prohibition to general

public to use the designation in the future, regardless of the specific factual circumstances, which

are examined when deciding on the legality of use of a trademark. In this case, the registrar could

not establish such circumstances, because at the time of registration of the domain, it was

impossible to know how the domain name will be used.

Sergey Zuykov,theManaging Partnerof Zuykov & Partners,

RussianPatentAttorneyandEurasianPatentAttorneycomments:domain names do not belong to the

protected results of intellectual activity and means of individualization, and in the Civil Code of

the Russian Federation, the domain names only appear as a way of using a trademark and

geographical indication. However, in accordance with the reference on issues arising in the

consideration of domain disputes, what countsis not only the eligibility, i.e., an exclusive right

to a trademark and its similarity to the domain, but also, among other things, the legitimate

interest of the owner (administrator) of the domain name; this does not indicate that the domain

names are assigned the status of intellectual property object.