After the May holidays, the Russian social network VKontakte got a new domain, VK.app. This happened after the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO, Geneva) ruled in favor of VKontakte in a complaint regarding the VK.app domain registered by a US citizen. This was the first WIPO case filed by a Russian complainant in the .APP domain zone.
The arbitration panel that worked on the case took into account the social network’s global fame: VKontakte is one of the world’s top 10 most visited websites and is available in 86 languages. The company also has had many VK trademarks protected in different countries for many years.
According to Anton Sergo from the Internet and Law legal firm who represented the network, VKontakte’s case for the VK trademark rights was also based on evidence of the respondent’s bad faith registration and use of the vk.app domain name. “In addition, this registration prevents VKontakte from using the domain for its apps. The work of the respondent, who is a professional domainer, did not determine what the ruling would be. However, the panelists doubted that a professional player on the domain market did not know about the large social network and its intellectual property as well. In the end, the complaint was upheld, and the vk.app domain was transferred to the social network,” Anton Sergo said.
Since the Uniform Domain-Name Dispute-Resolution Policy (UDRP) was adopted by ICANN on August 26, 1999, the WIPO Arbitration and Mediation Center in Geneva, Switzerland, has become the leading platform for resolving domain disputes. The UDRP has a special legal construct for “bad faith registration of a domain name,” which means:
- the registration of a domain name will be regarded as bad faith if all three conditions are met:
- the domain name corresponds completely or partly with a trademark or service mark the applicant has rights for
- the domain name’s owner has no rights or legal interest regarding the domain name
- the domain name was registered and is used in bad faith.
The same legal construct has recently been introduced in Russian courts when resolving domain disputes.
The longstanding UDRP applies to gTLDs and some ccTLDs. New domain zones (about 2,000, including .рус, .москва and .moscow) also fall under its jurisdiction. Moreover, this system is a unique tool that allows trademark owners to fight cybersquatters from Russia, because Russian court rulings do not bear on these domain zones.
