A supermarket chain, on behalf of its management company Start, filed a claim with the court of arbitration against the registrar and registrant of the Domovoy.ru domain name. They have filed to take away and transfer to it the domain, which is similar to the Domovoy trademark registered in 2016. The plaintiff claims that the registration and use of such a similar domain by another company has violated the trademark rights of the Start Management Company.
According to representative of the domain registrant, Doctor of Law, Professor Anton Sergo (Internet and Law), in the overwhelming majority of such disputes, the small company has little chance for success, however, in this case the law was on its side since Domovoy LLC (the domain registrant) is the company name, and it owns the trademark Domovoy. The initial registration of the domain in 1998 countered the plaintiff’s argument on registering the domain in violation of the right to the trademark registered 18 years later.
“The domain registrants themselves can and should change the vicious practice urging court to carefully analyze the applied law,” said Anton Sergo. “For example, paragraph 3 of Article 1848 of the Civil Code of the Russian Federation indicates a set of circumstances in which a violation of trademark rights is possible. If at least one of them is not proven, a violation cannot be established.”
Mr. Sergo also said the highest courts have repeatedly pointed out to the lower courts the need to apply the key provisions of the UDRP, according to which the issue of violating the rights of a trademark holder should be resolved in the presence of three criteria in total:
1) A domain name is identical or confusingly similar to the trademark; 2) A domain name owner does not have any legal rights or interests in relation to the domain name; 3) A domain name is registered and is being used in bad faith.
“In this case two of the three conditions were absent, which means that such a claim cannot be satisfied,” the attorney said. “The actions of the plaintiff in this situation can be justly qualified, in legal terminology, as ‘abuse’ of the right.”
