The Russian Intellectual Property Court considered case A40-91339/2017, which is very important for the entire domain business. It is necessary to know the history of the case to understand why. Back in September 2016, representatives of Dixy South found out there was a domain name dixy-kit.ru. The company has registered the trademarks ДИКСИ and DIXY, and its lawyers rightly decided that this was an infringement on intellectual property rights. They asked Registrator R01, which registered this domain, to reveal who the registrant was. The company refused, saying that the registrant was an individual and the registry could only disclose this information at the request of authorized agencies.
Dixy South sent a letter before taking legal action to Registrator R01 with a second request to disclose the registrant’s data and cancel the delegation of dixy-kit.ru. The request was not granted: Registrator R01 refused in line with the rules of domain name registration set by the Coordination Center for TLD .RU/.РФ, which include an exhaustive list of reasons to cancel the delegation of domain names. A letter from a trademark owner is not one of them.
After that, Dixy South filed a lawsuit. It was heard by the Moscow Arbitration Court in January 2018. During the trial, the information of the registrant of the domain name in question was disclosed, but then Dixy South demanded one million rubles from the registrant and Registrator R01 for infringing on its intellectual property rights. The court refused to satisfy this demand. However, subsequent appeals and a re-examination of the case resulted in Dixy South recovering 100,000 rubles from Registrator R01 “for violation of the exclusive right to a trademark.” Representatives of Registrator R01 had to file a cassation appeal, which was examined by the Intellectual Property Court.
Defining the status of the registry was the key issue. Dixy South lawyers insisted that Registrator R01 served as an information mediator. According to Paragraph 1 of Article 12531 of the Russian Civil Code, the person that delivers material to an information-telecommunication network, including the internet, the person that makes it possible to get the material or the information required to get it through the use of an information telecommunication network, or the person that makes it possible to access the material in that network, i.e. an information mediator, is liable for a breach of intellectual rights in the information telecommunication network on general grounds. In response, Registrator R01’s lawyers said that the activities of domain name registries did not fall under the category of an information mediator, because the domain name was only a designation of the address of the corresponding internet website, but not its content. This means that the domain registry only registered the corresponding domain name and submitted the information about it to the Domain Name List, without transferring any materials on the internet or providing an opportunity to publish information or access it.
The first instance court had already stated this position was right, and the Intellectual Property Court reaffirmed it. Its ruling sets an important precedent: domain registrars and registries do a lot to counter criminal activities on the internet. However, they cannot and must not assume the functions of internet content police. “If this ruling does not bring the dispute over whether the registry is an information mediator to an end, it at least serves as an important step in establishing court practice in this area. The domain name is only a part of the address system, and turning it off will not prevent users from accessing the illegal content. This is why ‘plucking’ some elements of the address at the request of an interested side, without competent confirmation by a court or another specialized agency, may be unpredictable for the internet,” commented Sergei Kopylov, the Coordination Center’s Deputy Director for Legal Issues.
