Russian judicial practice with respect to domain disputes becomes more consistent

Every year on April 26, the world marks World Intellectual Property Day. Although domain names do not constitute intellectual property, they have many of the properties typical for branding tools for online websites. Most domain disputes arise between domain name registrants and intellectual property owners. The Coordination Center for TLD .RU/.РФ focuses on protecting the rights of both registrants and intellectual property owners. The Coordination Center is actively involved in developing mechanisms for resolving domain disputes and building a respective judicial practice in Russia. It also conducts research into trademark protection in the domain market. We have developed pre-trial interim measures that are taken immediately upon a copyright holder’s request. Extensive work is carried out to establish a full-fledged and continuous dialogue between representatives of copyright holders and infrastructure companies – specifically, registrars and host companies.

Educational projects are also a significant part of the Coordination Center’s work in this area. It is raising awareness among both intellectual property owners, workers of judicial and government bodies, and registrants. Timed to coincide with World Intellectual Property Day, the Coordination Center launched an intellectual property quiz for all Runet users. What Do You Know About Intellectual Property? went online at 12 noon on April 27. Users had just three hours to submit their answers to 15 questions. Quiz winners will receive exciting prizes from the Coordination Center.

The Coordination Center offers a whole range of services that specifically help Russian registrants and copyright holders to resolve any potential issues that could result in legal disputes. One such service is a trademark verification service developed in cooperation with Online Patent. This approach allows many problems to be addressed promptly and out of court.

“Due to the public’s steadily growing involvement in online activities, processes and mechanisms of statutory regulation in this industry are becoming more flexible and up-to-date. Russian judicial practice regarding domain disputes is becoming more consistent and predictable while maintaining an individual approach to every dispute on domain name usage. Toughening responsibility for credibility of registrants’ data is an apparent trend these days. Moreover, right now we are witnessing many court proceedings moving online. Consequently, we can expect that the Russian domain disputes heard by courts will become more aligned with the out-of-court dispute resolution under UDRP which is common in foreign domains,” noted Sergei Kopylov, Coordination Center’s Deputy Legal Director.

.RU and .РФ registrars have also noticed that the registrars themselves are sued less often. Pavel Patrikeyev, Head of the Legal Department of the REG.RU registrar, pointed out that suing a registrar (for example, in commercial courts) is more frequently considered as unsubstantiated and as a violation of the right to a specific territorial jurisdiction. He believes that this is due to the fact that many major brands are willing to cooperate with registrars under extrajudicial protocols.

“However, there are a number of conventional matters that are getting new interpretations. For instance, the Intellectual Rights Court offered a new interpretation of standardization of registration rules in its latest ruling in the case on ceasing delegation of (Case #А40-251365/2019). Meanwhile, in cases when a plaintiff demands that a registrar cancel delegation of a domain through court, whether such demands are justified is often determined on a case-by-case basis – therefore, this practice is not firmly established. It should not go without mention that in the past year, REG.RU has seen more cases when the parties settled their domain disputes amicably. They entered into settlement agreements and involved the registrar in the drafting process. We fully support and approve of such decisions,” Pavel Patrikeyev said.

Denis Kirichenko, Deputy Legal Director at RU-CENTER Group, argues that until the legal status of domain names and associated rights are not clearly regulated by law, participants in the respective legal relations will have to rely on the court practice alone, as inconsistent and self-contradictory as it may be at times.

“There are some positive trends though that should be mentioned. As the number of domain disputes grows and the courts accumulate experience in this area, legal practitioners are improving their qualifications; the assessment and understanding of nuances of such cases by the courts is rising to an adequate level thus gradually shaping a uniform legal practice. There is more attention on behalf of the government as new legislative acts are being considered and adopted with respect to internet regulation. The new legislation will bring meaningful changes to the industry in the near future and will surely influence domain disputes as well. It is also telling that, according to the Russian Supreme Court’s recent interpretation of Part 4 of the Civil Code and its applications, despite the formal reservation stating that domain names do not constitute protected intellectual property and branding tools, the specifics of protecting exclusive rights to the domain names from infringement are given substantial consideration,” Denis Kirichenko noted.

Intellectual property lawyers, IP CLUB President Marina Rozhkova and President of the Internet & Law legal firm Anton Sergo, also note that when it comes to domain disputes, Russian litigation practice remains to be rather equivocal even though the courts have been dealing with domain disputes for over 20 years.

“It is no secret that hearing domain disputes related to intellectual property protection is not a simple matter for the judges. Early on, it could be explained by a lack of regulation and quantitative insignificance of interpretations by judicial bodies that would sometimes take a stance that was far from being uncontestable. Still, as the scope of legal reasoning grew in the form of interpretations by the Russian Supreme Court and the Intellectual Rights Court, the situation did not improve fundamentally. As indicated by judicial practice, courts sometimes take polar approaches to similar issues. Furthermore, it should be admitted that courts may evaluate a case exclusively from the perspective of law, with no due consideration for technical aspects that may in fact influence the outcome. In my opinion, there could be adjustments. Therefore, I would like to mention in particular the Coordination Center’s efforts to improve the Russian internet users’ understanding of the internet governance, to develop the internet and DNS,” Marina Rozhkova said.

Anton Sergo noted that to this day, domain names are not properly regulated. As a result, there may be issues with transferring domains; in very few cases, a domain may be subject to a pledge or used as collateral. There are also unresolved issues when it comes to inheriting a domain name. “Adopting practices of the Uniform Domain-Name Dispute-Resolution Policy is a very slow and difficult process for our judicial system. The policy was developed 20 years ago to protect the rights and interests of all the parties to a domain dispute. This system is known for its well-calibrated infringement criteria providing for wise and balanced rulings,” Anton Sergo commented.

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