When establishing that a violation has occurred, it is necessary to clearly establish the nature of the violation, namely whether the violation of exclusive rights was caused by publication of information on an internet website or by using character identification in the domain name that is similar to a trademark (service mark).
If the exclusive rights were violated by publishing information on an internet website, the claimant must address his respective statement (complaint) to the hosting provider of the respective internet website.
If the exclusive rights were violated by the administrator using a character identification in the domain name that is similar to a trademark (service mark), the administrator of the respective domain name, as the person holding rights to dispose of and use the domain name, will be the appropriate defendant in the claim.
To ensure protection of his exclusive rights by filing suit against the domain name administrator, the right holder may apply to the registrar for pre-trial restrictions on any activity related to the domain name, by filling out an application for pre-trial restrictions on domain name activity. Application terms and procedure are available on the website.
The claimant (right holder) also has the right to request information on the administrator of the respective domain name from the registrar in order to protect the claimant’s legal rights and interests in court by filing suit against the administrator.
To protect his exclusive rights to a trademark (service mark), the right holder has the right to take legal action.
According to Part 1 of Article 65 of the Commercial Procedure Code of the Russian Federation, each party to the case must prove the circumstances that this party refers to as grounds for his demands and objections. According to Article 64 of the Commercial Procedure Code of the Russian Federation, arguments in the arbitration process shall be made using the evidence cited in the Commercial Procedure Code, including written evidence.
Under Part 3 of Article 64 and Article 75 of the Commercial Procedure Code of the Russian Federation, it is prohibited to use any evidence obtained in violation of the law.
Parts 1 and 2 of Article 64 of the Commercial Procedure Code of the Russian Federation, which define the term of evidence and list evidence that can be used in arbitration, do not provide for the use of inadmissible evidence during arguments in commercial court to establish that a violation of exclusive rights to a trademark (service mark) occurred.
Thus, when preparing the documents that will be subsequently reviewed by court as evidence in the case during a hearing on the merits, the right holder must observe applicable law during the preparation of such evidence (documents).
Evidence confirming that a trademark (service mark) violation occurred may include statements by experts and competent authorities, protocols of written evidence reviews, all executed according to applicable law.
According to Article 125 of the Commercial Procedure Code of the Russian Federation, “a statement of claim shall be filed with a commercial court in writing. The statement of claim shall be signed by the claimant or his representative.” The form and substance of a statement of claim are described in Part 2 of Article 125 of the Commercial Procedure Code of the Russian Federation. A sample statement of claim to protect exclusive rights to a trademark (service mark) is available here.
Before filing the statement of claim to protect exclusive rights to a trademark (service mark), the claimant (right holder) is advised, in order to secure injunctive relief, to additionally file an injunction motion. The injunction motion shall be based on the possibility of certain circumstances which may later make it difficult or impossible to execute a court order.
A court order enforcing (cancelling) injunctive relief shall be grounds for the registrar to update the registry with the imposed (cancelled) restrictions on activity with regards to the respective domain name. A sample injunction motion is available here.
Please note that in disputes over the violation of exclusive rights to a trademark by a domain name, it is reasonable for the claimant (right holder) to additionally seek injunctive relief in order to secure the claimant’s property interests even before taking legal action, as stated in Article 99 of the Commercial Procedure Code of the Russian Federation.
Under Article 29 of the Commercial Procedure Code of the Russian Federation, disputes related to the protection of exclusive rights to branding of legal entities, goods, works, services and corporations, intellectual property rights of use, etc. shall be heard by a commercial court regardless of whether the claimant is an organization, a sole proprietor or an individual.
Therefore, according to applicable Russian law, cases regarding the protection of exclusive rights are heard by commercial courts.
A statement of claim in the appropriate format as well as corroborating documents shall be filed with a commercial court at the defendant’s location (domicile). The statement of claim may be filed as a hard copy (either via the secretarial office or by mail to the respective court) or electronically, including as an electronic document with electronic signature, by completing an online form on the court’s official internet website.
