In our articles published on RU-CENTER website we have repeatedly put in focus of our readers' attention the procedural peculiarities of the domain dispute proceedings.
The publications prepared by us, in particular, show that the proper defendant in the cases related to trademark and company name rights violations in domain names, as well as the party to be liable for any trademark and company name rights violations in domain names, is the domain Registrant (owner).
The claims related to the trademark and company name rights violations in domain names should be lodged to the disputed domain name Registrants (owners), rather than to the Registrars or any other parties.
It is an arbitration court, rather than a trial court of general jurisdiction, that hears the cases of trademark and company name rights violations in domain names, even when an individual acts as the disputed domain name Registrant (owner).
In this article we shall cover the issue of how, in our opinion, claims related to the domain disputes should be formulated.
"Wrong" Stated Claim Formulations Can Provide a Separate Reason to Reject a Suit…
The issue has a critical practical significance. If the plaintiff has formulated its stated claim in a "wrong" way, by law this circumstance all by itself can provide a separate reason to reject a suit.
Modifying earlier stated claims during the proceedings under Article 49 of the Commercial Procedure Code of the Russian Federation leads to court session postponements and to proceeding procrastination. It should be noted in this respect that in almost each and every domain dispute the plaintiffs clarify or modify in course of the proceedings their initially stated claims and sometimes give up some of their stated claims.
Russian arbitration court judges today are quite busy. "Wrong" stated claim formulations provide an additional burden for the court which has to review the claims that are, in fact, not targeting the protection of the plaintiff's violated or disputed rights and legitimate interests, as required per Section 1 of Article 4 of the Commercial Procedure Code of the Russian Federation. Such claims are knowingly negative in their consequences.
The "wrong" stated claim formulations also affect the amount of the judicial acts passed following the proceeding results, which provides a further burden for the court, too, as the court, when passing its judicial act related to the case, has to indicate these formulations, as well as consider each of them individually and evaluate the circumstances referred to by the plaintiff as their justification.
The way of formulating the stated claims affects the court verdict which, if passed in favour of the plaintiff, provides or does not provide a ground for a cancellation of the registration of a disputed domain name and for the plaintiff's preferential right for the domain name registration. In summary, in case stated claims are "incorrect", the plaintiff may not receive the right to a domain name, even if the court decides to satisfy these claims.
It Is Enough for the Plaintiff to State One or Two Claims…
Analysis into the domain dispute-related judicial acts shows that in most cases the plaintiffs sue the domain name Registrants (owners) and request the court in their claims to ban the domain Registrant (owner) from using the plaintiff's trademark or confusingly similar representation in the domain name in dispute.
It is not by chance that the plaintiffs state their domain dispute-related claims in this particular way.
Under the effective Terms and Conditions of Domain Names Registration in domains .RU and .РФ, a court verdict banning the domain Registrant (owner) from using the plaintiff's trademark or confusingly similar representation in the domain name in dispute provides a ground for an early cancellation by the Registrar of the disputed domain name and for granting the plaintiff a preferential right to its registration.
Consequently, in order to gain the right to a domain name, it is sufficient for the plaintiff to state the claim of banning the domain Registrant (owner) from using the plaintiff's trademark or confusingly similar representation in the domain name in dispute.
Alongside the said claim, a claim can be stated to recover from the disputed domain name Registrant (owner) a compensation as per Article 1515 of Civil Code of the Russian Federation for an illegal trademark use amounting from ten thousand to five million roubles.
Therefore, we do believe that in a domain dispute it is sufficient for a plaintiff to state one or at most two claims in order to have its legitimate rights and legally shielded interests properly protected, in case the court passes a positive ruling.
In practical terms, the domain dispute plaintiffs lodge, as a general rule, many more stated claims.
Thus, for instance, the plaintiff in a recent judicial domain dispute has lodged 6 stated claims, just 2 of these having been satisfied by the court. The court has banned the defendant from: (1) using a confusingly similar representation to the plaintiff's trademarks in its advertising and goods or service promotion on the websites linked to the domain names in dispute; and (2) using a confusingly similar representation to the plaintiff's trademarks on the domain names in dispute. All the other claims have been rejected.
That being the case, in our opinion, the claim to ban the defendant from using a confusingly similar representation to the plaintiff's trademarks in its advertising and goods or service promotion on the websites linked to the domain names in dispute has been lodged by the plaintiff without taking into account the fact that under paragraph 3.3.5.1 of the RU-CENTER Domains Registration Schedule in RU and РФ TLDs a court ruling banning the defendant from using a representation in the domain names provides a ground for cancelling the defendant's registration and for granting the plaintiff a preferential right to the domain name registration.
Cancelling the defendant's domain name registration means that the defendant will no longer be the domain Registrant (owner) and, consequently, will be deprived of its chance of using a confusingly similar representation to the plaintiff's trademarks in its advertising and goods or service promotion on the websites linked to the domain names in dispute.
Therefore, it suffices:
- to execute the ruling in the plaintiff's interests as far as banning the defendant from using a confusingly similar representation to the plaintiff's trademarks in the disputed domain names and
- provide the plaintiff a preferential right to the domain name registration within the effective Terms and Conditions of Domain Names Registration in domains .RU and .РФ
These actions will deprive of any practical significance the court decision regarding the banning the defendant from using a confusingly similar representation to the plaintiff's trademarks in advertising and goods or service promotion on the websites linked to the domain names in dispute.
We believe in this respect that there is no reasonable need to lodge a claim to ban using a representation in advertising and goods or service promotion on the websites linked to the domain names in dispute along with the claims on banning the representation in the domain names.
The Fact of Trademark Right Infringement Relates to the Ground of Action of Suit, Rather Than Its Subject…
Quite often the plaintiffs request the court to adjudge the defendant's actions related to domain name administration as an infringement upon the plaintiff's right to the trademarks or company names.
However, ferreting out the fact of infringing upon the rights to a trademark or to a company name relates to the ground of action, rather than to the subject of suit.
In case the court establishes in its judicial act related to the case that there is an infringement upon the plaintiff's rights to the trademark, then by operation of law this circumstance will provide a ground for the court to take legal action to have the plaintiff's trademark rights protected.
In most cases the plaintiffs stating this claim tend to give it up at the preliminary session of the court and the court terminates its proceedings as far as this matter is concerned or less frequently the court decides on rejecting this part of claims or on terminating its proceedings related to the case.
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We hope that issues covered in this article will be taken into account by the interested parties and, as a result, will promote a faster and more correct domain dispute settlement.
Authors: lawyers Elena Gertseva and Andrei Grinkevich.
E-mail of the authors: law@nic.ru