Zuykov and Partners Succeeds in Banning the Use of the Designation "xcmg" in the Domain Name

Xugong Ru LLC appealed to the Arbitration Court of the Samara Region with a statement of claim against Megatrans LLC and individual entrepreneur Dmitry Mikhailovich Shinkin to prohibit the use of the designation "xcmg" in the domain name of the xcmgru.ru when offering for sale and selling special construction equipment, as well as to recover compensation from the Megatrans company and individual entrepreneur D.M. Shinkin in favor of the XuGong Ru company.

Zuykov and partners represented the interests of the plaintiff, XuGong Ru LLC. XuGong Ru is the only official Russian distributor of XCMG, the largest Chinese manufacturer of special equipment. The plaintiff is a licensee who has been granted the right to use XCMG trademarks in the territory of the Russian Federation under the terms of an exclusive license - under international registrations NoNo 916605, 1131366, according to the certificate of the Russian Federation No 977226.

A dealership agreement was concluded between the XuGong company and the Megatrans company, under which the latter was granted the right to use trademarks during the term of the contract. Trademarks, in particular, were used in the domain name xcmgru.ru when offering for sale and selling special construction equipment and spare parts on the addressable site. At the same time, the administrator of the domain name is D.M. Shinkin (General Director of the Megatrans Company), and the actual owner of the site is the Megatrans Company.

Subsequently, the dealer agreement was terminated, but the defendants did not stop using the trademarks in the domain name, which was the reason for XuGong to apply to the court for the protection of its rights.

Megatrans expressed its disagreement with the fact of violation of the plaintiff's exclusive rights and pointed out that the plaintiff's actions to terminate the dealer agreement were an abuse of right, and the plaintiff's actions to file a statement of claim were an act of unfair competition.

As a result of the consideration of the dispute, the court concluded that the trademarks and the disputed domain name are confusingly similar due to the complete inclusion of a strong element of the XCMG trademarks in the distinctive part of the domain name, as well as taking into account the fact that the goods in respect of which the trademarks are registered are similar to the goods that are offered for sale and sold on the website of Megatrans. Moreover, the court recognized the actions of the defendants in the use of the domain name as an act of unfair competition.

Having established the fact of infringement of exclusive rights to trademarks, the Arbitration Court of the Samara Region decided to prohibit Individual Entrepreneur D.M. Shinkin from using the designation "xcmg" in the domain name xcmgru.ru when offering for sale and selling special construction equipment, as well as to recover compensation jointly and severally with Megatrans LLC and Individual Entrepreneur D.M. Shinkin in favor of XuGong Ru LLC.

Thus, the lawyers of Zuykov and partners managed to achieve a ban on the illegal use of trademarks in the xcmgru.ru domain name, as well as to recover compensation from the violators.