We are witnessing in our regular practices ever more cases when the legitimate rights and interests of its initial registrant and any other interested parties are infringed due to the domain ownership transfer. This being the case, registrants and other interested parties sometimes fail to be aware of the ways to contest a domain ownership transfer so as to protect their legitimate rights and interests and return the domain. With reference to the available judicial practice, we have tried to cover the topic in this article.
A Proper Domain Transfer Mechanism
The domain names are registered for the purpose of their further use in the User's resource addressing on the Internet. Domain names are registered on the basis of an application filed by the user.
Information on the domain Registrant is available through the publicly accessible Whois service. For example, you can go to Whois page on our Company's website, then type the domain name on the Whois service line and then access the public information from the Domain Name Registry on the domain typed: who is its Registrant, the relevant contact information, etc., as well as the Registrar information. If the domain Registrant information is not fully reflected on the Whois service, whether at Registrant's will or under the Russian legislation in effect, or else if it is insufficient for the case under review, the entire domain holder's information can be obtained on a request filed by the court, law-enforcement authorities or attorney.
As per Section 6.1. of the Terms and Conditions of Domain Names Registration in domains .RU and .РФ, the Administrator (Registrant) shall have the right to transfer the right to administer the domain name (i.e. to transfer the domain ownership) to another person within the domain name registration validity period (except the periods stipulated in clause 6.5 of the present Terms and Conditions) by dispatching a request in writing to the Registrar who exercises domain name information support.
As per Section 6.2. of the Terms and Conditions, the person who receives the domain administration rights of 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.
Prior of the processing of the application for the transfer of the administration rights , the Registrar shall have the right to screen details about Administrator (Registrant) entered in the Registry by suspending the processing of the application until completion of the screening as per Section 9.3.6 of the Terms and Conditions.
The domain name administration rights are deemed assigned since the date on which the domain name Registrant's data has been modified in the Registry.
Therefore, under the effective Terms and Conditions, the Registrant's application in writing for the domain administration rights transfer to another party and confirmation by the Assignee of its consent to receive the domain administration rights provide the prerequisites for the Registrar to enter into the Registry the new domain Registrant data, when assigning any domain title.
Domain Transfer Practices
In practical terms, in order to make domain ownership transfer, the former Registrant files to the Registrar its request on domain right transfer drawn up in the form set by the Registrar, while the Assignee submits its application granting its consent to receiving the domain administration rights.
The above requests filed in the Registrar manager's name serve to confirm the fact of putting through a deal related to the domain name administration rights transfer between the domain Registrant and Assignee.
That being the case, the domain name ownership transfer may also be made by the domain Registrant and Assignee by entering into a relevant civil law contract signed between the two parties, for example, a purchase contract, a gift contract, etc., which, however, does not exempt the domain Registrant and Assignee of the need to file the appropriate requests to the Registrar.
As a general rule, the interested parties learn that there is "something wrong" going on with the domain name by visiting the website and finding out that it either does not function at all or contains information on some other company or other contact information, or readdresses to another website, etc.
The interested parties can get a confirmation of the domain ownership transfer by using the Whois service.
At the same time the interested parties should bear in mind that a domain name ownership transfer, like any other deal, may be adjudged invalid under a claim lodged by an interested party, provided there are any reasons available as per Articles 168 through 179 of the Civil Code of the Russian Federation.
Contesting a Domain Transfer Deal
In practical terms, deals related to a domain name ownership transfer are contested because these deals represent, as a general rule, interested-party transactions (transaction in which participants have interest) or gratuitous transactions, and on other grounds.
(1) In case such a deal is disputed by one of the parties involved, then, correspondingly, a claim to invalidate this deal must be lodged to the other party involved in it, i.e. by the former Registrant to the Assignee, rather than to the Registrar or any other parties.
(2) In case such a deal is contested by another interested party, rather than by a party involved in the transaction, specifically, by a member of a company/organisation/group which transferred the domain to another party, then the claim to invalidate the deal must be lodged to the parties involved in the it, i.e. to the former and current Registrants of the domain name in dispute.
The Registrar of any contested domain names is involved in a case related to invalidating domain name ownership transfer as a third party that makes no independent claims as to the subject of the dispute.
The need to have RU-CENTER, as well as any other Registrar, involved in the proceedings related to domain disputes as a third party is conditional on the fact that a judicial verdict in the cases provided for in Section 12.1 of the Terms and Conditions of Domain Names Registration in domains .RU and .РФ, provide a ground for an early cancellation of a disputed domain name registration or domain name ownership transfer to another party.
The Registrar submits to the court the domain ownership references, confirms or rebuts the fact of a Registrant holding any domain name, can present to the court a domain "history", suspends a domain from its transfer for the duration of the proceedings and performs any other actions specified for it in the Terms and Conditions.
The way for the plaintiff to formulate its clams has a critical practical significance.
The solution of the problem depends, in our opinion, primarily, on whether the interested party has at its disposal any documents in support of having made a deal related to domain name ownership transfer by its Registrant to another party or has none of the kind.
(1) In case domain name ownership transfer deal has been made in the form of a separate document signed by the two parties, for example, as a domain name purchase contract (Contract of sale) and the plaintiff has such a document at its disposal, in this case the plaintiff may request the court to invalidate the said contract.
(2) In case the interested party does not have at its disposal the documents in support of the domain name ownership transfer from the Registrant to the Assignee, then, under the procedure in place, it can obtain from the Registrar the information on the domain Registrant, its whereabouts et al., as well as the copies of any documents used as a ground for the domain ownership transfer.
As noted above, when making domain name ownership transfer, the Registrant and the Assignee are to file with the Registrar their respective requests to provide a basis for making an entry in the Domain Name Registry on a change in Registrants.
In this case, the plaintiff may request the court to invalidate the domain name ownership transfer based on applications filed by the former domain Registrant and Assignee in the name of the Registrar's manager.
Also it should be born in mind that invalidation as such of a domain name ownership transfer is insufficient for restoring the infringed legitimate rights and interests of an interested party: it is the legal consequences of the deal nullity that matter; and these should be applied for by the plaintiff to the court.
Judicial Practice Analysis
An analysis into the available judicial practices at our disposal as to the cases related to the nullity of any domain name ownership transfer reviewed by the Moscow City Arbitration Court shows that there are no uniform consequences of the domain name ownership transfer deals nullity claimed by the plaintiffs in court.
(1) Thus, for instance, when contesting ownership transfer in relation to a disputed domain name, a member of a company which assigned the domain name to another party has requested the court to invalidate the domain name transfer transaction made in the form of applications filed by the company he is a member of and by a new Registrant in the name of the Registrar's manager, and adjudge to the company he is a member of the right to the domain name administration (case No. ю40-72042/06-81-435).
When reviewing the case, the court has invalidated the domain name ownership transfer by the company made in the form of applications filed by the former and current Registrants in the name of the Registrar's manager, but denied the company the right to administer the domain name.
The court has decided that meeting the claim cannot restore the plaintiff's infringed rights. The plaintiff, as a matter of fact, solicits for announcing a ruling in favour of another party, which runs counter the provisions of Article 4 of the Commercial Procedure Code of the Russian Federation.
(2) The approach to the ruling as to the nullity consequences of a deal related to the domain name ownership transfer was somewhat different in case No. ю40-58671/07-67-480.
When making its decision in the said case, the court has adjudged invalid a disputed domain name ownership transfer based on letters by the former and current Registrants and, within the framework of applying the nullity consequences with regard to an invalid transaction, "banned the defendant from administering any disputed domain names on the Internet".
(3) When settling a dispute in case No. ю40-158243/09-83-1009, the court has invalidated a deal related to domain name ownership transfer from a former Registrant to a new one and obliged the current Registrant to file a letter to the Registrar requesting the administration rights transfer to the former Registrant. The legitimacy and justification of the ruling in this case has been reviewed by Arbitration Court of Appeals No. 9 which left the ruling unchanged and has not satisfied the defendant's appeal.
Ways to Formulate a Claim
In our opinion, in the cases related to the invalidation of domain name ownership transfer, like in the cases related to the domain disputes involving trademark or business name right protection, the plaintiffs should formulate their claims on the nullity consequences related to a domain name ownership transfer , while taking into account Section 12.1. of the Terms and Conditions of Domain Names Registration in domains .RU and .РФ.
As per Section 12.1. of the Terms and Conditions, the Registrar shall terminate independently the administration rights after receiving evidence of a valid court ruling which:
- bans the Registrant from using in its domain name a mark the plaintiff is entitled to;
- adjudges the domain name administration by the Registrant as a violation of the plaintiff's rights (unless the termination of the administration rights contradicts the judicial verdict); and
- obliges the Registrant to otherwise give up the domain name.
Therefore, if the plaintiff requests the court to invalidate a transaction related to the domain name ownership transfer, and, as a consequence of the deal nullity, demands the court to oblige the Assignee to transfer the domain name back to the former Registrant, then, in this case, the plaintiff will face two ways of seeking the judicial ruling enforcement:
(1) by proceeding in execution, unless the Assignee implements the verdict voluntarily. The procedure is provided for in the laws and is fully implementable in practice. Helped by the tipstaff, the domain Assignee will be forced to file an appropriate application on the domain title transfer to the plaintiff.
(2) As per Section 12.1. of the Terms and Conditions, a court ruling on a claim satisfaction came into a legal force may provide a ground for the Registrar to terminate the disputed domain name administration rights in respect of its Assignee and to transfer the domain name administration rights to the former Registrant.
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In conclusion, we would like to emphasise that an interlocutory injunction is needed in the cases related to the domain name ownership transfer nullity.
Authors: lawyers Elena Gertseva and Andrei Grinkevich
The authors' e-mail: law@nic.ru