Domain Name Case Law Remains Inconsistent

Mosfilm Case
Kodak Case
Comment

Russia has no legislation in place to regulate infringements of trademarks or corporate names by registered internet domain names. In the absence of a clear legislative framework, the case law remains limited and contradictory.

The Russian courts have heard two major court cases that concerned the conflict between domain names and trademarks or corporate names. While the claim was upheld in the first case, the courts did not acknowledge any infringement in the second.

Mosfilm Case

The domain name 'mosfilm.ru' was registered by a natural person in his own name. Mosfilm, a Russian cinema company, initiated proceedings against the Russian domain name registrar, RosNIIROS, on the grounds that its corporate name had been infringed.

On July 7 1999 the Moscow Arbitration Court upheld the claim. The word 'Mosfilm' had been registered in 1927 as a short-form company name by a legal predecessor of the cinema company. The court found that there was an infringement, since (i) there cannot be two identical domain names on the internet and (ii) the claimant did not allow its company name to be used on the internet. RosNIIROS was therefore prohibited from using or registering domain names that contain Mosfilm's company name.

The decision was welcomed by many commentators. However, it was not followed in a subsequent case.

Kodak Case

A Russian distributor of Kodak registered the domain name 'kodak.ru'. It refused the requests of Eastman Kodak Company to transfer this domain name to Kodak. Kodak tried to sue the alleged perpetrator for both corporate-name and trademark infringement.

Corporate name infringement
Kodak's corporate-name claim was filed by the Russian subsidiary of Eastman Kodak Company, Kodak LLC, against RosNIIROS.

In its ruling of December 8 1999 the Moscow Arbitration Court rejected the claim on the grounds that the claimant's company name was not 'Kodak', but 'Kodak LLC' (in compliance with Russian legal requirements). It ruled that the name 'Kodak LLC' had not been infringed.

The court of second instance upheld the judgment on January 28 2000. It stated that the decision was based on the fact that the defendant had registered the domain name before the claimant's company (Kodak LLC) was created in Russia. Kodak's appeal is scheduled for March 20 2000.

Trademark
Kodak also sued the person who had registered the domain name, claiming that its trademark had been infringed.

On August 30 1999 the Moscow Arbitration Court rejected the claim. It made the following observations:

• The main purpose of a domain name is to distinguish one area of internet information space from the rest;
  
  
• Domain cannot be classified as goods or services, and thus does not fall within the scope of the Law On Trademarks, Service Marks and Appellations of Origin of Goods;
  
  
• There is no legal framework that regulates domain names; and
  
  
• The defendant placed a clear disclaimer on its web site which stated that it had no affiliation with the Eastman Kodak Company.

The ruling was upheld by the Moscow Arbitration Court and the Federal Arbitration Court of the Moscow District. Kodak has recently filed a request for a supervisory action to the Supreme Arbitration Court.

Comment

The approach taken by the courts in these cases does not comply with accepted international practices. It can be concluded from the judgments that Russian courts will only provide protection if the allegedly violated corporate name was registered in Russia before the respective domain name's registration. However, other issues, including the protection of well-known trademarks, are not addressed.

It is clear that thse inconsistencies will only be resolved by the introduction of specific legislation on this issue. Recent reports suggest that this may occur in the near future.

For further information on this topic please contact Eugene Arievich, Igor Pozhitkov Mikhail Usubyan or Alla Izmailova at Baker & McKenzie's Moscow office by telephone (+7 095 230 60 36) or by fax (+7 095 230 60 47) or by e-mail ([email protected]). Alternatively, contact AnyaKruglova at Baker & McKenzie's St Petersburg office by telephone (+7 812 325 83 08) or by fax (+7 812 325 60 13) or by e-mail ([email protected]).