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28 December 2022

Zuykov and partners defended the interests of the entrepreneur in the case of violation of the exclusive right to trademarks PROFILDOORS

On December 5, 2022, the Moscow Arbitration Court made a decision on the case No. A40-199683/22 regarding the claim of individual entrepreneur Mekvabishvili M.D. to the defendants Segimovu O.A. and Domain Name Registrar REG.RU on the protection of exclusive rights to PROFILDOORS trademarks and the recovery of compensation.


The interests of the copyright holder (Mekvabishvili M.D.) in this dispute were represented by Zuykov and partners.


The copyright holder found that on the website profildoors-mall.ru activities are carried out on the offer for sale of interior and entrance doors, as well as locks and hardware using the designations “PROFILDOORS MALL”, profildoors-mall.ru, which are confusingly similar to the trademarks of Mekvabishvili M.D. When checking the domain name, it was found that the domain registrar is REG.RU Domain Name Registrar LLC, and the domain administrator is Segimov O.A.


In accordance with the provisions of Part. 4 APC RF, believing that the actions Segimov on domain name administration profildoors-mall.ru and the Internet store of the same name located at this address, violate its exclusive right to trademarks, the copyright holder turned to the domain name administrator registered in the Sverdlovsk region.


The claim letter dated July 26, 2022 was left unanswered, and the illegal use of trademarks on the site has not been stopped to date, which served as the basis for the copyright holder to file a lawsuit to suppress the illegal use of trademarks and collect compensation. The domain name registrar REG.RU was involved as a co-respondent in the case, since it is a person who can stop the violation by canceling the illegal registration.


Representatives of the defendants did not agree with the arguments of the copyright holder. Representative of Segimov asked to transfer the case under jurisdiction to a court of general jurisdiction at the place of registration of his principal. At the same time, he did not agree with the claims on the merits of the stated requirements, believing that his actions did not constitute a violation of the exclusive right to trademarks. REG.RU in terms of the requirements against him, asked to dismiss the claim, while undertaking to execute the court decision and stop the administration of Segimov's disputed domain name, if its actions are recognized as a violation of the exclusive right of the plaintiff.


The Moscow Arbitration Court, having assessed the evidence presented in the case and the arguments of the persons participating in the case, established the confusing similarity of the designations PROFILDOORSMALL, profildoors-mall.ru, PROFIL DOORS, PROFIL DOORS MALL, which are used by Segimov, with trademarks No. 544577, 633916, due to the full inclusion of the word element "PROFILDOORS" into the disputed designations, as well as a similar compositional construction. In addition, the court considered as proven the homogeneity of the services provided by Segimov O.A., with services for which trademarks have been granted legal protection (class 35 of the Nice Classification).


Whereas the right holder Mekvabishvili did not give consent Segimov to use designations, confusingly similar to its trademarks, in the provision of services, homogeneous services for which trademarks are granted legal protection, the court recognized the actions of Segimov on the acquisition of rights to the domain name profildoors-mall.ru and its administration violating the rights of Mekvabishvili for trademarks according to the certificates of the Russian Federation No. 544577. In addition, the court exacted from Segimov in favor of Mekvabishvili compensation in the amount of 100,000 rubles, as well as the cost of paying the state fee in the amount of 10,000 rubles.


With regard to the claims against LLC Domain Name Registrar REG.RU, the court considered them excessive, since the recognition of the actions of the domain name administrator as violating the exclusive right is sufficient for the registrar to take the necessary actions aimed at restoring the violated right of the owner.


Decision of the Court

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