Court rules on domain names and infringement of company names

Supreme Arbitrazh Court decision

On December 8 2009 the Supreme Arbitrazh Court ruled that the use and administration of unauthorized domain names constitute an infringement of rights in a corporate name.

Facts

The Moscow Arbitrazh Court ruled on a dispute involving the administration of unauthorized domain names that allegedly infringed the claimant's trademarks and its exclusive rights in its corporate name. The court also considered the issue of prohibiting the registration of domain names that are similar to other parties' trademarks and corporate names.(1)

The court dismissed the claims, finding that there had been no infringement of the claimant's exclusive rights in its trademarks. Citing Article 1483(9)(3) of the Civil Code, the court noted that the domain names had been registered long before the claimant had registered the trademarks (and similar combinations of words).

In dismissing the claim in respect of the rights in the corporate name, the court referred to Article 1474(4) of the code in finding that a legal entity's corporate name can be violated only by another legal entity, whereas the defendant was a natural person with no corporate name. The court observed that the claimant had been registered as a legal entity in 1996. However, the state registration number for entering data in the Unified State Register of Legal Entities in respect of legal entities registered before July 1 2002 was not obtained until 2008 - that is, after the defendant had registered the domain names.

Two appeal courts endorsed the first instance decision. The claimant appealed again.
Supreme Arbitrazh Court decision

After reviewing the claimant's application, the Supreme Arbitrazh Court quashed the lower courts' decisions and upheld the claimant's exclusive right to use its corporate name. It ruled that the defendant's administration of the disputed domain names violated the claimant's right in its name, and prohibited the defendant from using the domain names.

The court ruled that a legal entity's date of registration, not the date on which it began its relevant business operations, determines the scope of protection of the exclusive rights in a corporate name. The court proceeded from the assumption that confusingly similar domain names had been registered in the defendant's name after the claimant had secured its rights in the corporate name.

However, the claims that the administration and use of the domain name constituted trademark infringement were rejected, as the domain names had been registered before the claimant's trademarks. Therefore, the court upheld the lower courts' decisions on this point, citing Article 1483(9)(3) of the code on the protection of trademarks.

For further information on this topic please contact Alexandra Pelikh at Pepeliaev Group's Moscow office by telephone (+7 495 967 0007), fax (+7 495 967 0008) or email (a.pelikh@pgplaw.ru). Alternatively, contact Sergey Spasennov at Pepeliaev Group's St Petersburg office by telephone (+7 812 333 0717), fax or email (s.spasennov@pgplaw.ru).

Endnotes: (1) Decision A40-53937/08-51-526.