Domain name disputes in RussiaBrieﬁng note14 March 2013New Court for Intellectual Property RightsRussia’s new Court for Intellectual Property Rights started operating recently and it marked a good occasion on which to review the state of Russian intellectual property law as it relates to domain names. While legislation establishing the court was passed in 2011, judges were not appointed and the court did not start functioning until February 2013, so it is quite new. It is a specialized court within the system of Arbitral courts, located in Moscow, which hears disputes related to intellectual property regardless of the nature of the legal parties to the dispute. In addition to being the court of ﬁrst instance in such matters, it functions as a cassation court.The Russian land grabThe “land grab” over international top-‐level domain (TLD) names has often allowed opportunistic trademark infringers to pre-‐empt legitimate brand owners.Russia is no exception, and one of the prime issues faced by foreign companies and brands entering the Russian market — whether they are primarily online or oﬄine players — is securing the rights over their domain names in the Russian TLDs.High-‐proﬁle domain name disputes in Russia have involved leading international companies such as Nike, Century 21, Burger King, Forbes, Kodak, Volkswagen and many more. All were decided in favour of the foreign entity although the process and length of the dispute procedures has varied widely, with the earlier cases taking much longer to decide. As the precedents accumulate, enforcing rights over Russian domain names is becoming a much more predictable and economical process for foreign companies.Russian Top-‐Level DomainsThere are actually three Russia-‐speciﬁc TLDs, namely:• .ru (“Russia”)• .su (“Soviet Union”)• .рф (“Russian Federation” in Cyrillic script)There is also the “.com.ru” domain administered by one of the Russian domain registrars, as well as “.ru.com”. Some foreign companies which ﬁnd themselves shut out from their rightful .ru TLD temporarily, have opted to establish their Russian websites on these less-‐than-‐ideal alternatives (notably PizzaExpress).
Legal environmentThere is no Russian law speciﬁcally covering rights to Internet domain names. Rather, they are covered under the existing laws related to intellectual property and, in particular, trademarks. The main law regulating this sphere is Part 4 of the Civil Code of the Russian Federation, which came into force on 1 January 2008 (latest amendment -‐ 8 December 2011).The Kodak case of 2001 was a landmark in this ﬁeld (the core of the case being the use of a trademark in a domain name). The court decided the case solely on the basis of international law (namely. the Paris Convention, of which Russia has been a party since 1965). The federal law on trademarks that existed at that time did not provide protection against the use of a trademark in a domain name. Still, the court prohibited the usage of the domain name in question.Since then, the Russian courts have acquired substantial experience in resolving intellectual property disputes related to domain names. There are guidelines of the highest courts on such matters which are obligatory for lower courts to follow (even though — oﬃcially — case law does not exist in Russia, being a civil law country).Court proceedingsThe ﬁrst thing to ensure is that you have registered your trademarks in Russia, as these documents must be submitted to the court in order to commence any proceedings.Under the old system, the choice of court for intellectual property disputes in Russia generally depended on the nature of the violator, as opposed to the nature of the violation).• The State Arbitral (arbitration) court system hears commercial cases involving legal entities, registered private entrepreneurs, and state enterprises, whereas• The common (general) court system hears civil disputes between natural persons who are not registered as entrepreneurs, and also hears all criminal cases.For the purposes of foreign legal entities involved in domain name disputes in Russia, the arbitration court is the proper choice except in the case of “substantial damage”, which can be considered a felony and would be heard by the general court.While the law provides that administrative rulings can be made solely on the basis of written submissions, domain name disputes do not fall under such criteria.There is also the possibility that the arbitration court would award a preliminary injunction prior to ﬁling and hearing the court case, although this is unlikely to happen in the case of domain name disputes. The cases where courts have awarded preliminary injunctions in intellectual property disputes are highly limited.
Initiating a claim via the arbitration court is fairly straightforward, and the procedural rules dictate that cases must be decided within 3 months (although they are usually extended to 4 months). Delaying tactics are often employed by defendants. However, as a rule, it is quite diﬃcult to extend the 4-‐month period under the arbitration court system and the majority of cases are decided within this time limit. The only case where it can be extended is when an independent expert is involved (usually this occurs when trademarks need to be analyzed as to similarity with the original, and would not include domain name disputes). When experts are involved, the period can be extended considerably (8-‐24 months).For foreign entities, in addition to the statement of claim, they must submit a power of attorney authorizing a local person to represent them. This representative need not be a lawyer -‐-‐ a representative of a legal person can be an advocate or any other person, providing legal assistance (per article 59 of the Arbitral Procedure Code). Additionally, certiﬁed copies of incorporation documents and registration certiﬁcates for trademarks and/or patents are required before initiating a proceeding. All documents must be translated into Russian by a certiﬁed Russian translator.Thus, the procedures for settling domain name disputes in Russia are becoming increasingly transparent and predictable, and help to support the overall growth and international appeal of Russian e-‐commerce.For more informationInterstice Consulting is fully equipped to register, administer and enforce domain name rights in Russia. To discuss your speciﬁc case with our experts, please contact us: Interstice Consulting LLCKrasnoproletarskaya ulitsa 31/1Building 5, Oﬃce 8Moscow 127030Russian FederationTel: +7 495 795 53 22Email: email@example.com