In the article entitled "How to Formulate Domain Dispute Claims in the 'Right' Way", we expressed our opinion as to how the rightholders should formulate their stated claims in respect of the domain-related claims so as to have a court verdict passed in the plaintiff's favour serving as a ground for the Registrar to discontinue the Registrant/Administrator (owner)'s right to administer the domain name in dispute and for granting the plaintiff a preferential right to the domain registration.
In our opinion, the rightholder should request the court to ban the disputed domain name Registrant (owner) from using in the domain name a representation it is entitled to.
If the rightholder has formulated its stated claims in this very way, then, provided the claim is satisfied, on the basis of Section 12.1. of the Terms and Conditions of Domain Names Registration in domains .RU and .РФ, the Registrar itself terminates the right to the disputed domain name ownership upon receiving evidence of a valid judicial verdict banning the registrant from using in the domain name a representation the plaintiff is entitled to.
The Terms and Conditions also state that a party in favour of which the verdict has been passed enjoys a preferential right to domain name registration. In order to have this right implemented, the plaintiff should, within 60 (sixty) days for the second-level domains in the TLD .RU and within 30 (thirty) days for the second-level domains in the TLD .РФ since the date on which the judicial verdict has taken effect, enter into an agreement with the Registrar of its choice and confirm its consent to receiving the domain ownership rights.
As follows from the Terms and Conditions, the order, described in the previous paragraph, can only be applied in case when on the judicial verdict execution date, the domain is administered by exactly the same Registrant which has been banned by the court from using in the domain name a representation the plaintiff is entitled to.
In case the disputed domain name ownership rights have been assigned to another party and the defendant is no longer its Registrant, then the rightholder, in favour of which the court passes the said judicial verdict, will not be able to obtain the disputed domain name ownership right under the procedure specified in the Terms and Conditions.
If the disputed domain name ownership right has been transferred to another party before the judicial act in the case is pronounced, this very circumstance can serve as a ground to reject the plaintiff's claims as to banning the former Registrant from using in the domain name a representation the plaintiff is entitled to.
That is because the violation of the plaintiff's exclusive rights is usually confirmed by dated notarial report, which relates to a particular domain name owner. The transfer of the domain terminates this ownership (i.e. the former owner of the domain is no longer the Registrant for it). Consequently, the court has no grounds for taking a decision banning the former domain name owner from using in the domain name a representation the plaintiff is entitled to, because the former owner is no longer using it, while not being the domain Registrant.
If a new Registrant is involved in the case as a co-defendant or following the result of an improper defendant's replacement with a proper one, the plaintiff will have to prove the fact of its exclusive rights' violation in the period after the domain name right was transferred to the new Registrant, which is extremely difficult to do. The notarial report submitted by plaintiff earlier together with the claim do not confirm this circumstance (the new Registrant was in no way related to the domain when the notarial report was prepared), the Notary Public does not secure evidence when a case is heard in court, while the website information can be deleted by the new Registrant, etc.
Transferring the disputed domain name ownership rights after the claim is made inevitably entails procrastinations in the domain name dispute proceedings and in some cases lodging by the rightholder independent claims to the new Registrant, and, as a consequence, provides an additional burden for the court.
In practical terms, quite frequent are the cases when a disputed domain name Registrant (owner) replacement takes place immediately after the domain Registrant, i.e.,the defendant, learns of facing the claim.
In most cases it happens after the domain Registrant receives from the rightholder, alias the plaintiff, a copy of the claim and the documents attached. The cession of the disputed domain name ownership transfer right is performed, as a general rule, by assigning the domain name ownership rights to another party.
The specific feature of the domain disputes is that a domain name Registrant (owner) needs very little time for transferring the domain ownership rights to another party.
Thus, for example, under Section 6.2. of the Terms and Conditions of Domain Names Registration in domains .RU and .РФ, "the person who receives the domain administration (i.e. ownership) right shall conclude with the Registrar, who exercises the domain name information support, a Contract on rendering the domain name registration services and confirm his/her consent for accepting the administration right in accordance with the said Contract.
The Registrar shall satisfy the administrator's application on transfer of the domain name administration right within 3 (three) working days upon receipt of application, conclusion of a Contract with the person to whom the administration right is transferred and upon the person accepting the administration right giving consent for receiving the administration right."
The ownership of the domain name shall be considered transferred from the moment of modification of information of the domain name Owner in the Registry.
In view of the above, we do believe that interlocutory injunction in the domain disputes to exclude a possible ownership transfer in respect of disputed domain names is a must. For the purposes of this article the domain disputes we mean only those disputes where the judicial acts in case of satisfying the plaintiff's stated claims can provide a basis for cancelling a disputed domain name registration and for granting the plaintiff a preferential right to its registration, when the Registrant's rights to the domain name are in contest.
First and foremost, we would like to point out that the interlocutory injunction excluding a possible transfer of the ownership rights in respect of any disputed domain names from their Registrants to other parties may be undertaken by the Registrar on the basis of the provisions specified in the Terms and Conditions of Domain Names Registration in domains .RU and .РФ. Regretfully enough, far from all the domain dispute participants pay attention to the fact that under the Terms and Conditions of Second-Level Domain Names Registration in the TLD .RU lodging a judicial claim in respect of a domain name provides in itself a ground for limiting the disputed domain name Registrant's rights. With regard to the domain names in the TLD .РФ, under the effective Terms and Conditions, such a ground will be provided by a relevant judicial act introducing interlocutory injunction.
Thus, for example, under Section 12.1. of the Terms and Conditions, the Registrant is not entitled to assign its ownership rights to another party, or disclaim the domain name, or transfer the domain name support to another Registrant, if sued in court/arbitration/tribunal because of the domain name. The Registrar supervises the compliance with this limitation imposed on the second-level domains in the TLD .RU since the date on which it receives the claim evidence. The limitation remains in effect until the Registrant submits to the Registrar its evidence that the proceedings are over, but may not last continuously for more than 45 calendar days. In relation to the second-level domains in the TLD .РФ the limitations are imposed since the date on which the Registrar receives the relevant judicial acts/rulings which restrain the above actions.
When the limitations apply, the Registrant is entitled to assign, with the Registrar's consent, the ownership rights to the plaintiff, if such an action is obviously conductive to dispute settlement.
It means that for undertaking the interlocutory injunction in respect of a second-level domain in the TLD .RU the rightholder should just submit to the Registrar its evidence of lodging a claim related to a domain name (in our opinion, a copy of the statement of claim bearing the court acceptance mark can serve as the evidence); for the application of the interlocutory injunction in respect of a second-level domain in the TLD .РФ the rightholder should submit to the Registrar a judicial act/ruling imposing such measures (a writ on claim securing). The Registrar then will be obliged to supervise the Registrant's compliance with the limitations provided for in the Terms and Conditions, and the Registrant will neither be able to assign ownership. rights to another party, nor disclaim the domain name, nor transfer the domain name support to another Registrar.
It should also be borne in mind that the limitations provided for in the Terms and Conditions remain in effect until the Registrant submits to the Registrar its evidence that the proceedings are over, but may not last continuously for more than 45 calendar days. Upon expiry of the above timeframe, the Registrant is entitled under the Terms and Conditions to assign ownership rights to another party or disclaim the domain name.
As the judicial proceedings related to the domain disputes last, as a general rule, much longer than 45 days, only interlocutory injunction, also in respect of the second-level domains in the TLD .RU, can provide a guarantee that the administration rights in relation to a disputed domain name will not be transferred from its Registrant to other parties.
In our opinion, one of the most efficient ways of securing a domain name claim can be provided by the preliminary interlocutory injunction specified in Article 99 of the Commercial Procedure Code of the Russian Federation, as the said measures may be taken by the court even before the petition of claim is submitted.
In practical terms, the preliminary interlocutory injunction related to the domain disputes, regretfully enough, are not yet widely spread, as the parties involved in the domain disputes do not always use the opportunities provided by Article 99 of the Commercial Procedure Code of the Russian Federation and extremely infrequently submit such requests to the court.
We presume that the issue of what specific interlocutory injunction should be applied in the domain-related disputes and in whose respect must be solved taking into the account the grounds on which the disputed domain name ownership right can be assigned to other parties.
As follows from the Terms and Conditions of Domain Names Registration in domains .RU and .РФ, third parties may get ownership rights for the disputed domain name in the following cases:
- transfer of the ownership rights to another Registrant;
- cancellation of the ownership rights (cancellation of the registration of a domain);
- expiry of the registration period for a domain;
- where the registration has been exercised with violation of technical requirements to the domain names effective as of the moment of registration;
- where the domain name registration was exercised in violation of the Terms and Conditions effective as of the moment of registration and was conjugated with the Administrator`s ( i.e. Registrant's) dishonest actions;
- upon the end of the preferential extension period;
- in case of termination by the Administrator (i.e. Registrant) of the Contract with the Registrar exercising domain name information support; and
- in case the Administrator (i.e. Registrant) forbids a further processing of his/her personal data exercised in accordance with the Terms and Conditions .
Transfer of the ownership rights to another Registrant and cancellation of the ownership rights (cancellation of registration) are only possible at the initiative of the domain Registrant themselves.
Thus, for instance, as per Section 8.3. of the Terms and Conditions, "the Registrar shall cancel the domain name registration within 3 (three) working days upon the Administrator's (i.e. Registrant's) application in writing."
As per Section 6.1. of the Terms and Conditions, the Registrant shall have the right to transfer the right to administer the domain name to another person at any time, except for the periods specified in Section 6.5. of the Terms and Conditions, by dispatching a request in writing to the Registrar.
The ownership right transfer to other parties in respect of a disputed domain name due to the registration period expiry becomes a possibility because the Registrant takes no action to pay to the Registrar for the renewal of the domain.
The above list is exhaustive so, respectively, the domain name-related interlocutory injunction should be conductive to excluding any disputed domain name ownership right transfer on the above grounds from the domain Registrant to other parties. Application of any other interlocutory injunction is hardly justifiable or necessary.
In our opinion, interlocutory injunction in respect of the disputed domain name Registrant should be applied in the form of banning it from transferring the disputed domain name ownership rights to any other parties, apart from the plaintiff, or from transferring the domain name to another Registrar, while in respect of the Registrar it should be undertaken in the form of banning it from cancelling the disputed domain name registration.
We believe the provisional measure that regards banning the domain name transfer to another registrar may be undertaken by the court in relation to the Registrant and the Registrar, as well as in relation to the Coordination Center for TLD RU, which will be banned by the court from entering into the .RU and .РФ Registries any information on a change of Registrars for the disputed domain name.
A special emphasis should be made by the parties involved in the domain-related disputes on the enforcement procedure of the judicial acts dealing with the domain name interlocutory injunction introduced in respect of the Registrar.
In our opinion, the judicial acts on interlocutory injunction should be sent directly to the Registrar to enable its actual enforcement within the shortest timeframe possible.
We would also like to remind that the plaintiffs should not forget to cancel the interlocutory injunction applied under their application by filing in time an appropriate petition with the court (refer to Article 95 of the Commercial Procedure Code of the Russian Federation) so as not to create a situation in which a judicial prohibition will not allow an execution of the court ruling (implementing the plaintiff's request to the Registrar).
In conclusion, we would like to point out that at present there is no uniform approach to the application of the domain dispute-related interlocutory injunction; the relevant practices are now at the stage of their formation.
Authors: lawyers Еlena Gertseva and Аndrei Grinkevich.
E-mail address for correspondence with the authors: law@nic.ru.