Gowling WLG (International) Inc - Russia
Domain name disputes are becoming more acute, sophisticated and global as e-commerce continues to develop in Russia.
No residence or local presence is required to register a domain name in the ccTLDs ‘.ru’, ‘.рф’ and ‘.su’. As a result, sophisticated cybersquatters from around the world can easily transfer their domain registrations and extort remuneration.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) does not apply in these cases, so unless settled amicably out of court, the only available solution is court action.
Until recently, domain name disputes with foreign ownership posed a legal and financial challenge for rights holders. However, a 2018 IP court ruling has significantly changed the legal landscape by ordering domain registrars to ‘undelegate’ (ie, terminate the functioning of the domain name) infringing domain names. In an even more recent ruling, the Ninth Arbitration Court of Appeal held a registrar liable as an information intermediary.
Domain registrars as information intermediaries
On 1 August 2013 legal provisions on the role of information intermediaries were introduced to the Civil Code, along with new anti-piracy amendments.
Article 1253.1 of the code defines an ‘information intermediary’ as an individual or business entity that:
- delivers material to an information-telecommunication network, including on the Internet;
- transmits the material or information required for getting it through the use of an information telecommunication network; or
- provides access to the content of that network.
In other words, an information intermediary is an aggregate term that encompasses a wide range of service providers (eg, hosting providers, websites and social media platforms).
According to Paragraph 2 of the article, an information intermediary that facilitates access to infringing material can be held liable for infringement, except in cases where it can prove that:
- it did not and should not have been aware of the fact that the content was infringing; and
- all necessary and sufficient measures to prevent the infringement were taken, upon receipt of a written notice from the rights holder containing links to the infringing content.
The question of whether domain name registrars qualify as information intermediaries has long been a topic of discussion in academic and business circles. Previously, courts held that registrars that provided hosting services effectively functioned as information intermediaries. However, the legal status of domain registrars that did not offer hosting services remained unclear.
In a domain name dispute ruling, the Ninth Arbitration Court of Appeal (А40-91339/17, 12 March 2019) qualified a domain registrar as an information intermediary and held it liable for failure to take necessary and sufficient measures to prevent infringement. It was fined accordingly.
The court stated that by registering the offending domain name, the registrar had facilitated access to the infringing content on the website. The court emphasised that the registrar was able to restrict access to the content. Further, it failed to provide a response to the claimant’s cease and desist letter, which was a culpable act.
Termination of domain-names delegation – special remedy
Instead of holding domain name registrars liable as information intermediaries, the registrar may be required to terminate the offending domain name in accordance with Article 1252. This means that the ability to place and store information on the domain name and the relevant servers, which are necessary for the functioning of the internet address system, may be terminated.
Article 1252 lists all of the remedies available to rights holders, including the ability to file a claim to prevent infringement actions (or create a threat of infringement) against any intermediary in a position to prevent it.
On 4 July 2018 the IP Court required a registrar to terminate an infringing domain name and qualified it as being in a unique position to prevent trademark infringement from occurring (A40-132026/2017, 4 July 2018). The court indicated that the requirement to terminate a domain is an effective way to prevent infringement.
The two abovementioned rulings illustrate a positive trend in rights holder protection. Under these rights holders now have the tools to recover domain names without involving the domain owner in the dispute. They may now enjoy procedural advantages by filing lawsuits in the registrar’s domicile (typically Moscow and Saint Petersburg) – that is to say, within the jurisdiction of the relevant courts.