Domain name: How to protect the right to a trade mark

03.08.2012

Denis Shumskiy, Advocate of the Law Firm "YUST"

Rightholders to trademarks frequently face violations of their exclusive rights in the Internet. Registration by a third party of a domain name, which is similar or identical to the trade mark, without the rightholder’s consent is one of those. Such actions may damage the rightholder’s reputation and confuse the consumers of services or goods. Besides, it becomes impossible to use the means of individualization in the Internet, since it is already in use by a third party. See the article for how rightholders can protect their rights, to whom the claims should be filed, how to prove the fact of offense.

Domain administrator is the appropriate respondent

The Civil Code of the Russian Federation (CCRF) provides for certain means of protection for the rightholders in such situations. For instance, the CCRF stipulates that the exclusive right to the trademark may be exercised for individualization of goods, works or services, in particular, by placing the trade mark in the Internet, including the domain name and other means of addressing (clauses 1, 2 of Article 1484 of the CCRF).

Also, no one is entitled to use, without the rightholder’s consent, markings similar to his trade mark in relation to the goods, for individualization of which the trade mark was registered, if a possibility of confusion arises as a result of such use (clause 3 of Article 1484 of the CCRF).

Thus, the rightholder, who has discovered a violation of his exclusive right to the trade mark, is entitled to file a claim with a court requesting that the violation of his exclusive right be stopped. The rightholder or the exclusive licensee may be claimants in this category of disputes. The domain administrator should be brought to court as the respondent, and the domain registrar – as the third party.

It should be mentioned that the issue of the composition of the domain case participants was a subject of discussions and had various practical solutions. For example, the rightholders frequently tried to bring domain registrars to courts as respondents. However, the courts nowadays act on the premises that the domain administrator is the appropriate respondent, as it is he who determines the procedure of the domain name use, bears the responsibility for the choice of the domain name and for possible violations of third party rights.

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