Ecoline, the copyright holder of the rembitteh trademark, filed a lawsuit against the administrator of the rembitteh.ru with a demand to “take away the domain.” The rembitteh.ru was registered in 2012 - more than 10 years before the plaintiff acquired the rights to the rembitteh trademark in November 2022. The plaintiff filed demands for a complete ban on the use of the domain name, despite the fact that the trademark was registered in some classes of the International Classification of Goods and Services (classes 35, 37), and the domain was used in others (classes 7, 8, 9, 16).
The Moscow Arbitration Court supported the domain administrator, refusing to satisfy Ecoline's request, paying special attention to the popularity of the defendant's domain, with reference to its traffic statistics and numerous reviews on relevant services. The domain's traffic (at the time of filing the trademark application) was about a million visitors per month.
According to the representative of the defendant, Anton Sergo (Internet and Law), despite the general position of the law on the priority of a trademark in such disputes, the court elaborated on the concept of abuse of rights in the re-seizure of a domain with reference to Article 10 of the Civil Code of the Russian Federation and Article 10.bis of the Convention on the Protection of Industrial Property.
The emerging turn in judicial practice towards preventing the reverse seizure of domains, according to Sergei Kopylov, Deputy Director for Legal Affairs of the Coordination Center for TLD .RU/.РФ, is good news for bona fide domain administrators. The Coordination Center previously covered the consideration of the case regarding the claim of the Nordic Newtrition company to ban the use of the nordic.ru domain, where the claim was also denied.
However, some time ago, in a similar case, the Moscow Arbitration Court made an opposite decision banning the use of the designation “mult” in the mult.ru domain, which was used to publish cartoons with Masyanya, despite the fact that the domain was registered 15 years before receiving plaintiff of trademark rights.
