Gowling WLG (International) Inc - Russia
What can trademark owners do in Russia when they find that another entity, most likely a cybersquatter, has obtained and registered a domain name that is identical or cleverly similar to its mark? Fortunately, Russian courts are quite sophisticated when it comes to handling this type of dispute – the case law is abundant and well developed and the vast majority of domain name disputes are resolved in the brand owner’s favour. Further, Russian courts usually grant interim injunctions, which block all operations associated with the domain name during litigation. However, changes made at the end of 2019 to several procedural codes could make it more difficult, expensive and time intensive for trademark owners to obtain these domain names from infringing registrants who use Russia’s country-code top-level domain ‘.ru’.
With regard to ‘.ru’, there is no Uniform Domain Name Dispute Resolution Policy or similar dispute resolution mechanism available for trademark owners against infringing domain names. If an infringing registrant does not voluntarily assign the domain name to the trademark owner, the only way for the trademark owner to obtain it is to bring a civil action to a commercial court where the infringer is based.
The regulations for ‘.ru’ set out a special procedure that guarantees the safe transfer of a domain name from the infringing registrant to the trademark owner if the court rules that an infringement has occurred. In this case, the registrar must terminate the domain name registration and provide the trademark owner with a 30-day priority right to register the domain name.
The issue of proper identification
Once an interim injunction has been granted, the infringing entity cannot assign the domain name to a third party. The domain name is usually recovered soon after this.
The most crucial aspect of many domain name disputes in Russia is the proper identification of the infringer or domain name owner (registrant). This process has become more arduous in recent months.
In the past, a trademark owner would approach the registrar with an advocate’s request, to which the latter would respond by providing the registrant’s name and address, as required. If the name and the address were obviously fake, it was then possible to ask the registrar to run a verification procedure. Otherwise, it was enough to file a civil action against the registrant providing its name and address.
However, as of October 2019 it is insufficient to provide the infringing registrant’s name and address in a court action. If the entity is an individual (which is usually the case), the trademark owner must now also provide more identifying information. This could include:
- passport details;
- social security number;
- driving licence; and
- tax ID, among other things.
If the trademark owner does not provide some of these identification details in the claim and does not give these in response to a special request by the court (the court can suspend accepting a claim for around a month), the claim will not be accepted.
The likely purpose of this change is to facilitate the work of the courts in all kinds of dispute by saving time to ensure the proper identification of individuals participating in proceedings. Unfortunately, this comes at the trademark owner’s expense.
This requirement may cause delays for trademark owners, since most registrars provide the registrant’s name and address only. This means that trademark owners will often need to conduct a separate investigation before filing a civil action to identify the registrant (eg, through an online search, onsite investigation, test purchase or request to state authorities).
Certain practices have managed to locate identification details by searching for the corporate history of companies involved in the supply of infringing products. However, it is believed that some infringing registrants, especially cybersquatters, will develop strategies to make it as hard as possible for trademark owners to gather their identification information. As a result, trademark owners will need to spend more time and resources in order to protect their domain names from infringers operating in the ‘.ru’ zone.