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Domain name termination is not always an effective measure

The minutes of the IPC Scientific Advisory Council meeting have been published on the Intellectual Property Court website at https://ipc.arbitr.ru/node/14496. The Council met on April 28 at the Intellectual Property – 21st Century forum. The meeting was attended by the Council members, representatives of state authorities, including judges and arbitration courts staff, the First General Jurisdiction Court of Appeal, professors and employees of leading Russian higher educational providers, as well as practicing lawyers. The participants focused on issues arising from the consideration of IP infringement cases.

The published document spells out the different perspectives on ways to prevent the misuse of domain names for IP-infringing activities, in particular, on the requirement for the registrar to remove the domain name delegation in case of its unlawful use.

Sergei Kopylov, Deputy Director for Legal Affairs at the Coordination Center for TLD .RU/.РФ, delivering his remarks agreed that the termination of a domain name by the registrar to preclude infringement is enforceable. However, in his opinion, this measure will not fully meet the goal of a case filed to terminate a violation such as the misuse of trademarks on the website or in the domain name. Sergei Kopylov pointed out that removal of domain delegation does not entail the de facto termination of access to the copyright infringing content. Furthermore, the measure in question may be excessive and may restrict access to legitimate content posted on the specified website along with the illegitimate material, and may also disrupt the addressing system to other sites and access to email addresses that use the domain name when its delegation is discontinued. “This may entail general risks, all the way to the plaintiff's request to terminate the offending domain name being qualified as a rights abuse under Article 10 of the Russian Civil Code. In this regard, this measure should only be used in exceptional cases involving IP-infringing content published on the website. However, it will be ineffective to address infringing use of a trade mark in a domain name,” Sergei Kopylov noted.

According to Kopylov, when removal of domain delegation as a measure of final suppression of addressing to a website develops in court practice and registrars are brought in as defendants, they will definitely be treated as information intermediaries. As such, registrars will be required to terminate the delegation in line with the right holder’s pre-trial requirements regardless of the website’s importance or the substance of the content requirements, since the registrar cannot influence the content in any way.

Summing up, Sergei Kopylov noted that certain technically effective mechanisms for addressing the problem are already in place. There have been precedents in some European courts. In cases where IP is misused in the domain name itself, the plaintiff should file an appropriate complaint to the registrant, while in cases where the domain name leads to a website supporting IP-infringing activities, it is advisable to contact the website’s hosting provider, with the exception of cases where illegal information is distributed through this website. “This measure is considered effective and it is widely used in other countries. There is no method other than removing illegal content from the source. The second most effective method is the Roskomnadzor blacklist,” Sergei Kopylov concluded.

The Scientific Advisory Council at the Russian Intellectual Property Court is an advisory body that develops scientifically substantiated explanations and opinions on the application of international treaties, laws and other regulatory acts for the purpose of forming a uniform judicial practice. It also drafts proposals to improve intellectual property legislation. For many years now, the Coordination Center for TLD .RU/.РФ has been placing emphasis on cooperating with the Intellectual Property Court, primarily in relation to domain disputes. In 2013, experts from the Coordination Center’s legal department helped draft the Intellectual Property Court Presidium resolution approving a statement on certain issues related to the procedure for the application of interim remedies in a domain dispute. In 2014, the Intellectual Property Court approved a statement on issues arising during the domain dispute reviews.

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