In an era of rapid digitalization of all industries, online commerce became part of our lives. This has led to new ways of using intellectual property. Before proceeding to the main topic of the article, let us start with the definition of what a domain name is, and the background of domain disputes.
According to the definition in the Rules of Registration of Domain Names in domains.RU and Russian Federation, approved by the decision of the Coordination Center of National Domain in the Internet of October 05, 2011 No. 2011-18/81 (hereinafter the Rules), a domain name is an identification for network addressing, which uses a system of domain names (DNS). In simple terms, a domain name, or as it is also called a domain, is the address of a website. A domain name allows users to search the Internet, among millions of other websites, to find exactly what they search for.
As the Presidium of Supreme Arbitration Court stressed in its Ruling of January 16, 2001 No. 1192/00 in case No. A40-25314/99-15-271, the main function of the domain name is the transformation of IP addresses (Internet protocol), expressed in certain numbers into a domain name to facilitate the search and identification of the owner of an information resource. Current commercial practice demonstrates that when choosing domain names for the Internet information resource owners stop at the most simple and logical names (word, group of letters, etc.), which are usually associated with consumers directly to a particular economic participant or its activities.
If we look at the reflection of evolution of domain dispute resolution in the Russian legislation, it would be as follows. In the wording of the Law of the Russian Federation of September 23, 1992 No. 3520-I On Trademarks, Service Marks and the Appellations of the Origin of Goods (hereinafter the Law on Trademarks, Law), which was effective until December 26, 2002 (hereinafter the Law on Trademarks), the exclusive right to the trademark includes the right to use and dispose of the mark, as well as to prohibit its use by others (paragraph 1 of Article 4).
In this case, under paragraph 2 of Article 4 of the said law, an unauthorized manufacture, use, import, offer for sale, sale, or any other manner of commercialization or storage for this purpose of the trademark or goods having that mark, or designation which is confusingly similar to homogeneous goods shall be deemed to be the infringement of the rights of the trademark owner.
Thus, if we literally interpret the above rule of law, the violation of the exclusive right to the trademark was only the cases of commercialization of goods having a trademark or a confusingly similar trademark, without the permission of the right holder.
The legal approach relating to the attribution of the use of a trademark in domain names has been legislated relatively recently and this is due, as it seems, to the moment of the appearance of the Internet in the lives of ordinary citizens, consumers of goods and services who began to use the tools of e-commerce.
It appears that the turning point that marked the need to amend the Law on Trademarks, was the already mentioned above lawsuit filed by the Eastman Kodak Company corporation to Grundul A.V., a non-incorporated entrepreneur to prohibit the use of the Kodak trademark, registered under the name of the claimer, in the domain name of the page defendant in the World Wide Web and to publish the judgment to restore the business reputation of the injured.
Thus, the Presidium of the Supreme Arbitration Court of the Russian Federation, abolishing the decision adopted on August 30, 1999, the appeal decision of October 28, 1999 by the Moscow Arbitration Court on case No. A40-25314/99-15-271 and the decision of the Federal Arbitration Court of the Moscow District of January 17, 2000 on the same case and sending the case for new trial in the court of first instance, in its decision dated January 16, 2001 No. 1192/00 pointed out the following. The arbitration courts, denying the right holder in the protection of exclusive rights with reference to the lack of legislative regulation of relationship with regard to the name of domains on the Internet, and that the domain name is neither a product nor a service, so it is not subject to regulation by the Law on Trademarks, not taken into account that such a legal approach contrary to the rules of said Law, as well as Article 10.bis Paris Convention for the Protection of Industrial Property.
At the same time, the highest court noted that the absence of a direct indication in the said rules of the Law that the use of someone else’s trademark in a domain name is an infringement of the rights of the trademark owner, does not prevent the court from recognizing such actions of an entrepreneur as an offense.
In the next version of the Law on Trademarks, adopted on December 27, 2002 the legislature establishment, taking into account the ongoing changes occurring in social relations, as well as the fact that the legal regulation contained in the original version of the Law is no longer sufficient, amended Article 4 by adding a second paragraph as follows.
“The commercial use of a trademark or a confusingly similar sign on the territory of the Russian Federation in respect of goods for which this trademark has been registered, or similar goods shall be regarded as an infringement of rights of the right holder (illegal use of a trademark), including the use of the trademark or a confusingly similar sign:
- on the goods, labels, packages, which are manufactured, offered for sale, sold, displayed at exhibitions and fairs or used commercially on the territory of the Russian Federation, or stored and (or) transported with this purpose, or imported into the territory of the Russian Federation; - while performing jobs, providing services;
- on documents introducing goods commercially;
- while offering goods for sale;
- in the Internet, particularly in the domain names and in other forms of addressing. The goods, labels, packages of these goods on which the trademark or a confusingly similar sign are used shall be regarded as counterfeits”.
Thus, in order to avoid earlier ambiguous interpretations of this rule, the legislator has specified ways of using a trademark, which are recognized as a violation of the exclusive right of the right holder (illegal use of a trademark), if such use is committed without the permission of the right holder.
At the same time, in the current legislation, namely in the part four of the Civil Code of the Russian Federation (hereinafter - the Civil Code), the provision that refers the use of a trademark in a domain name to the exclusive right of the owner of the trademark has remained almost unchanged and is reflected in subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code.
Paragraph 3 of Article 1484 of the Civil Code also states that no one has the right to use, without the permission of the right holder, similar to its trademark symbols in respect of goods, for individualization of which the trademark is registered, or similar goods, if such use would create the possibility of confusion.
Turning to the issue of evidence in domain disputes, we can say the following.
According to the legal position set out in paragraph 55 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019 No. 10 On Application of Part Four of the Civil Code of the Russian Federation (hereinafter the Resolution No. 10), “When considering cases on protection of infringed intellectual property rights, courts should take into account that the law does not establish a list of admissible evidence, on the basis of which the fact of violation is established (Article 55 of the Civil Procedure Code, Article 64 of the Arbitration Procedural Code of the Russian Federation). Therefore, by virtue of Articles 55 and 60 of the Civil Procedure Code, Articles 64 and 68 of the APC RF the court has the right to accept any source of evidence provided for by the procedural law including those obtained using information and telecommunications networks, in particular the Internet”.
Meanwhile, the totality of the above-mentioned rules of law establishes a mandatory range of circumstances to be proved in disputes on the protection of the exclusive right to a trademark. In particular, to recognize the use of a designation by a person (not the right holder) in violation of the exclusive right to a trademark, the right holder of such a trademark must prove the identity or confusing similarity of the used designation with the designation protected as a trademark, as well as the likelihood of confusion of the two designations in the eyes of consumers (paragraph 3 of Article 1484 of the Civil Code). At that, the likelihood of confusion of designations is a necessary element of an infringement of an exclusive right.
As it is known, from the paragraph 5 of paragraph 162 of Resolution No. 10, “the establishment of similarity is carried out by the court by comparing the trademark and designation (including graphic, sound and semantic criteria), taking into account the evidence presented by the parties in its judicial activism. The court shall take into account in respect of which elements there is a similarity, i.e.., strong or weak elements of the trademark and designation. Similarity of only unprotected elements shall not be taken into account.
In this case, special knowledge is not required to establish the degree of similarity of designations and homogeneity of goods. This means that in order to prove these circumstances within a domain dispute, there is no need to provide an opinion of a patent attorney that the designation used in the domain name and the trademark are similar, and that the goods or services offered on the website to which the domain name refers, are similar to the goods or services for which the trademark is registered.
Meanwhile, the person seeking protection of an infringed right must prove to the court that such use occurs. Such evidence may serve, including made and certified by persons involved in the case, printouts of materials posted on information and telecommunications network (screenshot), with an indication of the address of the webpage from which the printout was taken, as well as the exact time of its receipt (sub-paragraph 2 of paragraph 55 of Resolution No.10)
In addition, according to the explanation given in sub-paragraph 6 of paragraph 55 of Resolution No.10 states that the evidence necessary for the case may be provided by a notary, if there are reasons to believe that the presentation of evidence later becomes impossible or difficult (Articles 102, 103 of the Fundamentals of the Legislation of the Russian Federation on Notarial System of February 11, 1993 No. 4462-1), including through the certification of website content as of a certain date.
Thus, there are two ways to fix the fact of using designation similar to a trademark in a domain name: by printing pages from the website to which the domain name refers, or by contacting a notary, who will prepare a protocol notarial examination of the website.
At the same time, there may be a reasonable question: who will be the defendant in a domain name dispute?
In accordance with sub-paragraph 3 of paragraph 78 of Resolution 10, the owner of the website is the administrator of the domain name that refers to the corresponding website, unless otherwise follows from the circumstances of the case and the evidence presented, in particular from the information posted on the website (paragraph 2 of Article 10 of the Law on Information).
As defined in paragraph 1.1., Administrator is a user in whose name a domain name is registered in the Registry. In this case, paragraph 159 of Resolution No. 10 explains that “the claim to suppress actions that infringe rights to the trademark, manifested in the illegal use of a domain name (subparagraph 2 of paragraph 1 of Article 1252, subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code), may be submitted to the administrator of the domain name.
Information on the domain administrator may be obtained from public sources, including through the WHOIS online service or from the domain name registrar responsible for domain name registration and maintaining the registry of administrators.
Meanwhile, the administrators of domain names are often individuals, who’s details have been protected by the Federal Law of July 27, 2006 No. 152-FZ On Personal Data and not published in public sources. The Registrar may also refuse to provide such information with reference to this law.
In this case, the data on the domain name administrator may be requested by the court from the domain name registrar at the request of the claimer as established in the Article 57 of the Code of Civil Procedure of the Russian Federation and Article 66 of the Arbitration Procedure Code of the Russian Federation.
In my experience, the above list of evidence is sufficient to meet the requirements of the court to stop the illegal use of a trademark in a domain name.
Hopefully, the analysis carried out in this article has been useful to the reader.