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Draft Part IV of the Civil Code of the Russian Federation and domain names. Problems and methods of protecting rights to a domain name Problems may be hidden behind the apparent simplicity of registering a domain name

Organizing your own space on the Internet in the form of a website - positioning and selling - is of great importance for business. And since the trade name and trademark, which often make up the domain name of a website, are protected results of intellectual activity, there is no avoiding controversy. Cases concerning the legality of using a domain name similar to the result of intellectual activity or a means of individualization are called domain disputes.

To correctly determine the procedural and material features of emerging disputes, it is necessary to understand the nature of the legal relationship regarding the registration of domain names.

The concepts of “domain name” and “domain”

A conditional (virtual) isolated section of the Internet space that allows you to access a website is called a domain. There is a hierarchical domain system in which national domains, for example, “.ru” - Russia, “.us” - USA, “.fr” - France, “.uk” - Great Britain, are first-level domains.

A domain name in domain.RU must consist of its own designation, unique within the top-level domain, and the characters “.ru”. It should not contain characters other than letters, numbers and hyphens, and their number in the designation varies from two to sixty-three.


Domain names have actually been transformed into a means that performs the function of a trademark...


Simultaneously with the allocation of a domain, each computer is assigned a unique domain email address - an IP address. After typing a domain name into the browser's address bar, the DNS server determines the IP address assigned to it and provides access to the site. In fact, the domain name was invented in order not to remember every time the IP address, which has a long numeric value. In this case, the domain name is unique. Consumers usually associate it directly with a specific participant in economic turnover or its activities. The existence of two or more domain names with exactly the same characters is technically excluded.

The domain name is not classified by current legislation as objects of civil rights () or real rights () and is not an object of intellectual property (). Its owner can be any person, including those who do not have the status of an individual entrepreneur.

The right to use a domain name arises on the basis of a registration agreement concluded with a domain name registrar and exists for the duration of the registration period (usually one year) with the possibility of extending the registration period.

Use of a business name and trademark in a domain name

When a domain name is mixed with a trademark, the violator gets the opportunity to attract potential buyers of goods under someone else's trademark to his page on the Internet...


Clause 14.4.2 of the Rules for drawing up, filing and considering an application for registration of a trademark and service mark, approved by Order of Rospatent No. 32 of March 5, 2003, establishes that a designation is considered confusingly similar to another designation if it is associated with it in general, despite their individual differences. And as a tool for searching for identical and similar designations and determining the homogeneity of goods, the International Classification of Goods and Services for registration of marks is used (clause 4.1 of the Methodological Recommendations on the Uniformity of Goods and Services during the Examination of Applications for State Registration of Trademarks and Service Marks, approved by Order of Rospatent dated December 31, 2009 No. 198).

The issue of confusingly similar designations is a matter of fact and, as a general rule, can be resolved by the court without appointing an expert examination (clause 13 of the Review of the practice of consideration by arbitration courts of cases related to the application of intellectual property legislation, approved by the Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation dated 13.12 .2007 No. 122; Resolution of the Intellectual Rights Court dated November 14, 2013 in case No. A40-8345/2013).

To recognize the similarity of designations, the danger itself is sufficient, and not the real confusion of designations in the eyes of the consumer (Presidium of the Supreme Arbitration Court of the Russian Federation of June 18, 2013 No. 2050/13 in case No. A40-9614/2012). The presence of a danger of mixing the services provided is evidenced by evidence confirming that the plaintiff and defendant carry out commercial activities within the framework of similar classes of the ICLG (provision of homogeneous services) (ruling of the Intellectual Rights Court dated October 7, 2013 in case No. A40-154813/2012).

However, the absence of evidence of confusing similarity of a domain name with a trademark becomes in practice a basis for refusal to satisfy claims (Resolution of the Federal Antimonopoly Service of the North-Western District dated March 28, 2011 in case No. A56-65383/2009).

Domain name registration

In Russia, the Administrator of the national top-level domains .RU and .РФ is the non-profit organization Coordination Center for the National Internet Domain (Coordinator). It has powers, including the development of rules for registration in the .RU and .РФ domains and the accreditation of registrars.

Registration of domain names in the .RU and .РФ domains is carried out through accredited registrars. In turn, the user in whose name the domain name is registered in the Registry - the Coordinator's database, is the administrator of the domain name and the proper respondent in domain disputes. Since the actual use of the site’s resources is impossible without the participation in one form or another of the domain administrator, who is the person who created the appropriate technical conditions for visitors to his Internet resource, the domain owner is responsible for the content of the information posted on such a site (Resolution of the Intellectual Rights Court dated 11.10. 2013 in case No. A40-161835/2012).

There are no legal restrictions on the domain registration process, as well as on the freedom to enter into a contract. This was indicated by the Moscow Arbitration Court in its decision of June 13, 2001 in case No. A40-12272/01-15-107.

According to clause 2.9 of the Rules for registration of domain names in the .RU and .РФ domains (approved by Decision No. 2011-18/81 dated 10/05/2011 as amended on 09/20/2012, hereinafter referred to as the Registration Rules), the registrar also does not have the right to independently make a decision on satisfying claims of third parties to the domain name. A person who believes that the administration of a domain name by its administrator violates the rights of this person (in particular, the rights to a trademark, business name, other intellectual property, the name of a non-profit organization or government body) has the right to make a claim to the administrator, as well as to submit a corresponding application to court.

First domain disputes

When building a defense, the copyright holder (plaintiff) will need to prove the following circumstances:

  • the fact that the plaintiff owns exclusive rights to a trademark or company name;
  • whether the designation used in the domain name is confusingly similar to the trademark, trade name of the plaintiff;
  • whether the specified domain name is used to promote those goods and services that are included in the scope of trademark protection, that is, homogeneous goods and services.

When filing a claim, you must also correctly formulate your demands. Demands in the form of cancellation of the registration of a disputed domain name and granting the plaintiff a preemptive right to register it are not subject to satisfaction (Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation dated June 4, 2013 No. 445/13 in case No. A40-55153/11-27-450). The procedure for canceling a domain name registration and terminating administration rights is contained in the Domain Name Registration Rules. Therefore, when formulating requirements, it is necessary to proceed from the specified order. As the Presidium of the Supreme Arbitration Court pointed out, the contested judicial acts do not contain instructions obliging the domain registrar to take actions to terminate the rights to administer the domain name, as well as prohibiting the domain administrator from using the controversial designation in the domain, although the administration of the domain was recognized as a violation of the rights of the plaintiff and assessed as an act of unfair competition .

How to avoid a domain dispute

Organizations that have the exclusive right to a trademark are recommended to choose a domain name that fully reproduces it. In this case, the organization will be able to use the methods of protecting exclusive rights provided for in .

If it is not possible to place an organization's trademark in a domain name, it is recommended to select a domain name that is as close as possible to the trademark so that it is confusingly similar to it, without affecting the trademarks of third parties. In this case, the organization will have more opportunities to prove that it has rights and legitimate interests to use such a domain name.

Yulia Sinitsyna, expert lawyer of the First House of Consulting “What to do Consult”, for the magazine “Consultant”

Lawyer at the enterprise

With the “Lawyer at the Enterprise” berator, you will easily resolve any conflict with counterparties and pass any inspection procedure with honor. You will also quickly find the form of any document, the required article of law, and an example from arbitration practice.

Current Russian legislation does not provide for the concepts of “domain name” and “domain”. A mention of the domain name can be found in the technical standard RD 45.134-2000 “Technical means of telematic services. General technical requirements". According to it, a domain is a hierarchically structured global address of a network host computer in the form of a string of characters. In a broad sense, this is a symbolic (alphanumeric) designation formed in accordance with the Internet addressing rules and corresponding to a specific network address.

In the legal literature, 3 approaches to determining the legal status of a domain name have been proposed:

  • technical: a domain name is just a verbal designation of a network resource that specifies the path to an information resource;
  • civil law: the function of a domain name is the individualization of an information resource;
  • mixed: a domain name is a unique symbolic name designed to identify resources on the Internet.

The Civil Code of the Russian Federation establishes an exhaustive list of intellectual property objects and equivalent means of individualization of legal entities, goods, works, services and enterprises that are provided with legal protection on the basis and in the manner prescribed by Part IV of the Civil Code of the Russian Federation. The domain name as a separate object of exclusive rights is not named in this list. This, according to the courts, indicates that it is not an independent object of exclusive rights. In addition, Russian legislation does not contain rules defining the legal status of a domain name and regulating relations arising in connection with the use of domain names.

Registration

The procedure for registering domain names is not regulated by law.

From the point of view of the courts, such rules may be determined by business customs.

According to the information provided in judicial acts, the Domain Name Registration Rules, approved by the decision of the Coordination Group of RosNIIROS dated December 29, 2001, were previously in force. They were applied to second-level domains in the .RU domain.

Currently, the Rules for Registration of Domain Names in Domain.RU and the Rules for Registration of Domain Names in Domain.RF have been adopted. They can be found on the official website of the Coordination Center for the National Internet Domain (http://www.cctld.ru/ru).

These rules define general terms, as well as the rights and obligations of the parties to register domain names in a particular Internet domain, the terms for which registration is carried out, and the obligations of the parties to maintain information about the domain name. By virtue of the provisions of these documents, 2 parties participate in legal relations:

  • registrar - a person providing domain registration services and accredited as a coordinator;
  • administrator (user) - a person who applies for a domain name registration service and subsequently administers (manages) the registered domain.

The registration period for a domain name in the .RU and .РФ domains is 1 year; in the future, it can be extended by the registrar based on an application from the administrator.

Important! The contract for the provision of domain name registration services is public, which, by virtue of Article 426 of the Civil Code of the Russian Federation, means that it must be concluded with each person who applies for the service.

The registrar in the .RU domain has the right to refuse registration on the following grounds:

  • availability of a domain name in the Register of Registered Domain Names;
  • availability of the domain name in the list of reserved domain names;
  • use as a domain name of words that are contrary to public interests, principles of humanity and morality (in particular, words of obscene content, calls of an inhumane nature, offending human dignity or religious feelings).

In the Registration Rules for the .RF domain, the list of grounds for refusal of registration has been supplemented with the following:

  • provision by the administrator of incomplete or false information about himself;
  • failure by the administrator to comply with the terms of the domain name registration agreement.

Right to use

When registering a domain name, the administrator must take into account that the domain name may overlap with objects of exclusive rights: a trademark, service mark, corporate name of a legal entity, other names and names, the use of which is regulated by law.

The current rules do not directly oblige the administrator to check the domain name for such matches; they only contain recommendations for administrators to carry out such a check when registering a name. At the same time, as follows from established judicial practice, domain administrators often violate, to one degree or another, the exclusive rights of owners of means of individualization.

Let us remind you. The objects of exclusive rights are the following means of individualization:

  • company name;
  • trademarks and service marks;
  • name of place of origin of the goods;
  • commercial designation

Articles 1484, 1519 of the Civil Code of the Russian Federation directly provide for the exclusive right of the owner of a trademark and appellation of origin of goods to use them on the Internet, including in a domain name. This is also true for a brand name.

You cannot use means of individualization that are confusingly similar to means of individualization owned by third parties who previously acquired the corresponding exclusive right. If a domain name uses a means of individualization that legally belongs to a third party, then this person may go to court in accordance with Article 1252 of the Civil Code of the Russian Federation if the right to the means of individualization arose earlier than the domain name and the means of individualization and the domain name are identical or similar before degree of confusion, and also has registration priority over the domain name. The opposite situation is also possible - when registering a domain name, the domain administrator began using this name before the priority date of the trademark. Here, the exclusive rights of third parties to means of individualization are not violated.

By virtue of the provisions of Articles 1474 and 1539 of the Civil Code of the Russian Federation, the transfer of the exclusive right to use a company name is prohibited, and the exclusive right to a commercial designation can be transferred to another person only as part of the enterprise for the individualization of which it is used.

An analysis of these norms shows that only the copyright holder who has an exclusive right to the company name can use a business name in a domain name. A commercial designation can be used to register a domain name only if the exclusive right to such designation is transferred to the domain administrator under an agreement as part of the enterprise that it individualizes, or under a commercial concession agreement. It follows from this that the right to use a domain name is lost by the administrator if it violates the exclusive rights of the owners of means of individualization.

Protection of rights

Due to the fact that a domain name is not the object of exclusive rights, when it is registered, the owner does not acquire exclusive rights. However, he is undoubtedly endowed with a certain amount of rights. In particular, the administrator:

  • determines the procedure for using the domain name and administering the information resource itself;
  • provides organizational and technical support for the functioning of the domain;
  • bears responsibility for possible violation of rights to means of individualization, as well as for conflict situations arising when using the domain.

As already noted, registration of a domain name is possible only if it is not in the Register of Registered Domain Names and in the list of reserved domain names. These are the basic conditions under which a domain name is registered. This means that the Rules for Registration of Domain Names in Domain.RU and the Rules for Registration of Domain Names in Domain.RF already contain a mechanism that prevents the illegal use of someone else’s domain name.

In accordance with the above, the right to a domain name can be defined as a set of rights of the domain owner to administer and establish the procedure for using the domain by other Internet users.

Since a domain name is not the object of exclusive rights and does not relate to things or other property, the legislation does not provide for the possibility of filing a claim for recognition or protection of the right to it; the conditions and subjects of legal relations are not defined.

Vitaly Borodkin , senior lawyer

Legal company "PRIORITET"

Approved Ministry of Communications of Russia 06.26.2000

Azarov M.S. Domain names in the structure of civil and information law // Information law. 2010. No. 2

Art. 1225 Civil Code of the Russian Federation; Clause 23 of the Resolution of the Plenum of the Supreme Court of the Russian Federation and the Plenum of the Supreme Arbitration Court of the Russian Federation dated March 26, 2009 No. 5/29

Decision of the Arbitration Court of the Irkutsk Region dated 09.09.2009 No. A19-10074/08-10-4; Resolution of the Federal Antimonopoly Service of the Moscow District dated September 27, 2010 No. KG-A40/10685-10

Resolution of the Federal Antimonopoly Service of the Moscow District dated July 29, 2003 No. KG-A40/4894-03

Resolution of the First Arbitration Court of Appeal dated October 22, 2009 No. A38-2321/2009

Approved by decision of the Coordination Center for the National Internet Domain dated June 17, 2009 No. 2009-08/53

Approved decision of the Coordination Center of the national Internet domain No. 2010-15/97

Clause 3.1 of the Rules for registration of domain names in domain.RU, approved. decision of the Coordination Center for the national Internet domain dated June 17, 2009 No. 2009-08/53; clause 1.4 of the Rules for registration of domain names in domain.RF, approved. decision of the Coordination Center of the national Internet domain No. 2010-15/97

Clause 3.6 of the Rules for registering domain names in the domain.RF

Art. 1225 Civil Code of the Russian Federation

I. Zet. 1474, p. Zet. 1484, p. Zet. 1519, paragraph 2 of Art. 1539 Civil Code of the Russian Federation

Resolutions of the FAS Moscow District dated December 10, 2010 No. KG-A40/14119-10, East Siberian District dated March 16, 2010 No. A19-10074/08, Presidium of the Supreme Arbitration Court of the Russian Federation dated December 8, 2009 No. 9833/09; decision of the Moscow Arbitration Court dated October 22, 2003 No. A40-32697/03-83-300

(Sergo A.) ​​(“EZh-Lawyer”, 2006, N 19)

DRAFT PART IV OF THE RF Civil Code AND DOMAIN NAMES

Anton Sergo, Ph.D. legal Sciences, teacher at Moscow State Law Academy, member of the UNESCO Department of Intellectual Property.

The need for the speedy adoption of Part IV of the Civil Code of the Russian Federation does not raise any doubts among anyone. So much has already been said about the Code as a whole and about the text of the draft that it is almost impossible to say something fundamentally new without repeating it. Nevertheless, quite little has been said regarding a fundamentally new means of individualization - a domain name, and lawyers practicing in this area express a number of wishes for the project.

In paragraph 1 of Art. 1542 of the draft, a domain name is defined as “a symbolic designation intended to identify information resources and address requests on the Internet and registered in the domain name registry in accordance with generally accepted procedures and business practices.” As follows from the text of Art. 1225 of the project, as well as the title of Chapter 76, the domain name should be a means of individualization, not identification of an information resource. Also in the text of the project, the understanding of the phrases “domain name registry” and “generally accepted procedure” causes ambiguity. Activities in the field of domain name registration lack legally defined frameworks and boundaries. For example, domain name registrars are commercial organizations, and the holder of the Russian registry of the RU zone (first-level domain), as well as the CIS registry (SU zone), is ANO. Another example is that since June 2006, according to the decision of the Coordination Center of the RU domain, it is not necessary to submit identification documents to register a domain. In other words, domains will appear registered to persons who were completely unaware of this and did not want it (but they will have not only rights, but also responsibilities, and they can be held accountable). There are other issues that require a little more precise regulation. For example, each registrar (and there are now 12 of them) at its own discretion determines whether to register or refuse to register domains if the domain name uses the words “contrary to public interests, principles of humanity and morality” (prohibited for registration by the Regulations). This issue is left to the discretion of registrars, which can give rise to inconsistent practices. The structure of domain names should also be clarified. So, paragraph 2 of Art. 1542 of the project defines: “A domain name consists of a hierarchical sequence of domain names, which are areas of the address space. Each of the domains occupies a certain level of such a hierarchical sequence, with the first-level domain including second-level domains, the second-level domain - third-level domains, etc. The first-level domain is the domain whose name is indicated in the domain name on the far right.” This formulation seems cumbersome and unjustified; in addition, then it would be necessary to define in the law not only “domain name”, but also “domain” (“domain name”), since according to the text of the articles these are different concepts. Returning from the concept of a domain to its legal regime, I would like to draw attention to paragraph. 2 tbsp. 1229 of the draft: “An exclusive right may belong to one person or several persons jointly.” Without denying the possibility that the right may belong to several persons jointly, it is important to note that it is necessary to ensure that domain name registrars are able to register a domain name for several persons.

Relationship with other IP objects

Another means of individualization with which domain names are increasingly intersecting lately are trademarks. Clause 8 of Art. 1483 of the draft specifies: “Designations that are identical or confusingly similar to a trade name or commercial designation (individual elements of such a name or designation) protected in the Russian Federation in relation to homogeneous goods, an industrial design, a domain name, or a sign cannot be registered as trademarks.” correspondences, the rights to which in the Russian Federation arose in other persons earlier than the priority date of the registered trademark.” In this case, it seems unjustified to narrow down the possible designations for registration as trademarks. The existence of, say, the domain aircraft. ru, dedicated to the history of domestic aviation, should not interfere with the registration of the “Airplane” trademark for gambling establishments. In order to protect against “reverse takeover”, it is necessary to prohibit the registration of identical (rather than similar) designations. Further in paragraph 2 of Art. 1484 states that “the exclusive right to a trademark may be exercised to individualize goods, works or services in respect of which the trademark is registered, in particular, by placing the trademark... on the Internet, including in a domain name and in other ways addressing." This wording takes us back to the problems that arose after a similar amendment was made to the Law “On Trademarks...” at the end of 2002<*>: ———————— <*>See: Sergo A.G. On the amendments made to Art. 4 of the Law on Trademarks // Code-info, 2003. N 1 - 2; and Sergo A.G. Internet and law. M., 2003. S. 37 - 38.

almost any mention on the Internet of a trademark or a confusingly similar designation could potentially be a violation of the exclusive right of the copyright holder; among other things, such wording may contribute to the “reverse takeover” procedure already known to the world, according to which the owner can be legally deprived of a domain name if he has not registered a trademark corresponding to the domain name; the wording “with other addressing methods” also raises reasonable concerns. For example, if on any Internet site the information is in a file whose name matches a registered trademark, this may also be considered a violation; it is unknown who should be given preference in the right to use a domain name if it coincides with registered trademarks owned by several entities, in cases where such trademarks are registered for different classes of goods and services; It is also possible that a domain name is registered but not used on the Internet, that is, when typing a domain name in a browser program, the Internet user is not sent to any site. Will the rights of the owner of the trademark be violated due to the mere fact of registering a domain name that coincides with the trademark?.. In Art. 1545 of the draft specifies the right of the domain name owner to “allocate new domains as part of the address space to which this domain name points.” From a technical point of view, an address space is understood as a subnet of IP addresses, and in this case we are more likely talking about the ability of the owner of a second-level domain to create domains at subsequent levels. The wording of Art. 1546 of the draft: “The inclusion of a trademark, a brand name, a commercial designation known in the Russian Federation, protected in the Russian Federation, as well as a designation confusingly similar to them, into a second-level domain is not permitted without the consent of the holder of the exclusive right to such a trademark, brand name or commercial designation." The fact is that: there is no way to obtain information about currently existing brand names and commercial designations; legal protection of a trademark or commercial designation, regardless of the class (field) of use, is clearly excessive; Judicial practice will most likely not allow you to use the perestroyka domain. ru (for example, for the media), if someone has a trademark “stroyka” (for construction) or “troyka” (for gambling business) or a similar commercial designation, brand name. In general, it is somewhat disappointing that, as before, a person whose rights are recognized as violated as a result of the registration and/or use of a domain name does not have the right to claim (demand transfer to him) this domain name or demand its registration in his or her own name as a priority . It seems appropriate to amend the wording of Art. 1548 of the draft, which deals with the transfer under the contract of the right “to use the address space to which this domain name points.” Perhaps there is a slight confusion of concepts here. Positive norm Art. 1549 of the draft: “At the request of the copyright holder, submitted to the person registering domain names in the first-level domain assigned to the Russian Federation, during the last two months of validity of this right, the registration period of the domain name is extended for the same period”, may need to be supplemented in accordance with with established practice. Firstly, renewal is actually possible at any time, and secondly, after the end of the registration period, the domain is “turned off”, but remains with the previous owner for another 30 days. In general, in conclusion, it should be noted that the specifics of domain names (and rights to them) in Russia and the world today are such that it would be preferable to separate such cases from court proceedings and transfer them to competent specialists within the framework of an administrative body specially created for this purpose. Summing up the analysis of one of the paragraphs of the bill, the author is aware that it is easier to criticize and analyze than to create and improve. Therefore, it seems completely fair to express sincere admiration for the work done by the developers, and the mentioned inaccuracies in one of the sections can be easily corrected. If it is necessary to make any amendments to the bill according to the text of this material, the author of these lines is ready to be as helpful as possible to the developers.

——————————————————————

On behalf of the presidential administration, it was prepared, which is expected to replace the laws currently in force in the field of intellectual property (IP) protection from January 2007.

The arguments of the working group’s lawyers against such regulation are given in the Conclusion:

Conclusion on Chapter 76 of the draft Part 4 of the Civil Code of the Russian Federation

(regarding domain names)

This conclusion is intended to show the inappropriateness of classifying domain names as means of individualization within the framework of the institution of intellectual property and the need to exclude the paragraph on the right to a domain name from draft Chapter 4 of the Civil Code of the Russian Federation.

Initially, domain names were intended to be used solely to simplify communication between computers connected to a single Internet network, but over time, domains began to be used as a way to identify users, as a result of which conflicts began to arise between the domain name system and the system of identification methods that arose earlier and were protected by regulations legislation on intellectual property.

However, we believe that the above is not a sufficient reason to give domain names the status of a means of individualization within the framework of the institution of intellectual property.

Currently, the Convention establishing the World Intellectual Property Organization (WIPO), adopted in Stockholm on July 14, 1967, of which Russia is a member, continues to be in force. The said Convention includes the following as objects of exclusive rights (intellectual property):

  • literary, artistic and scientific works;
  • performing activities of artists, sound recordings, radio and television broadcasts;
  • inventions in all areas of human activity;
  • scientific discoveries;
  • industrial designs;
  • trademarks, service marks, trade names and trade names;
  • protection against unfair competition,

as well as all other rights related to intellectual activity in the industrial, scientific, literary and artistic fields.

All top (first) level domains are conditionally divided into two groups. These are general use domains - gTLD (), which include COM, NET, ORG, INFO, BIZ, etc.; and national two-letter ccTLD domains (), allocated for a specific country or region (RU, UK, DE, FR, etc.).

As a result of their increasing popularity, country code domains have come into the spotlight, and ccTLD conflict resolution has become a key policy issue in this regard. To assist ccTLD administrators, WIPO Member States have asked the WIPO organization to develop a set of voluntary guidelines to improve practices and develop policies to prevent fraudulent registrations of protected names and resolve related disputes. Such documents have been developed. In its 2001 recommendations for country code top-level domains, which continue to be relevant today, WIPO separates domain names from objects of exclusive rights (intellectual property).

IANA (Internet Assigned Numbers Authority) RFC:1951 also emphasizes that a domain name registration does not have trademark status.

When regulating the protection of means of individualization, it is recognized that the information contained in the means of individualization of the manufacturer or the product itself is extremely important for the market, for the consumer, and therefore requires protection through exclusive rights. That is why their detailed legislative regulation was introduced.

The absolute commercialization of a domain name contradicts its main task - connecting computers on a network. Many domain names are registered without any commercial plans for it.

Rights to means of individualization arise in the process of a certain administrative procedure enshrined in regulations. The process of registering a domain name is not based on such a procedure, and cannot be based, including due to the system that has developed over the years.

Registration of a domain name in national domains occurs on the basis of an agreement between the person who wants to register it and the registrar authorized to do so by the international corporation ICANN, which currently manages the Internet address space. Currently, 90% of national registries in the world operate on the basis of the application procedure (domain registration for the first applicant) without any restrictions. In some countries, applications for domain names are first checked against a list of world-famous trademarks. However, in case of coincidence or similarity with a trademark, as a rule, only a warning is issued that the applicant is responsible for possible violation of the rights of third parties. The domain is registered.

General trends in the development of national domains are a gradual transition to open domain registration rules and the removal of restrictions. The proposed project leads to the opposite process.

An attempt to introduce strict legislative regulation of the registration and use of a domain name will inevitably lead to the fact that, firstly, the registration system itself in the .RU domain will not be able to quickly respond to external changes in the registration system, since it will require their legislative codification, and , secondly, - to the departure of users from the .RU domain to domains that do not contain strict regulation. Therefore, government policy regarding domain names should adhere to the principle: “do no harm.”

Of course, it is necessary to protect both domain name owners and owners of means of individualization from attacks by unscrupulous persons, however, in our opinion, this can be achieved in other ways without introducing the status of domain names as objects of exclusive rights.

Before 2003, when domain names were not mentioned in the law, resolving disputes between trademark and domain name owners was very problematic. After amendments were made to Part 2 of Article 4 of the Law of the Russian Federation “On Trademarks...”, the court recognized the fact of using the trademark in a domain name in relation to homogeneous goods and services as a violation of the rights of the trademark owner. This innovation made it possible to create a working mechanism for protecting trademark owners, which has proven itself positively over the past three years. Thus, the issue of the relationship between trademarks and domain names has now been quite successfully resolved. In this regard, it would be logical to leave in Article 1481 of the Draft the provision that the basis for refusal to register a trademark in relation to homogeneous goods and services may be an identical domain name registered in the name of other persons. Similar rules should be introduced in paragraphs regarding brand names and commercial designations.

In addition, taking into account the positive three-year experience in applying the norm of Part 2 of Art. 4 of the Law “On Trademarks...” when resolving disputes, in our opinion, it should be retained in the Draft.

To resolve disputes between owners of trade names, trade names and domain name owners, similar rules should appear in the appropriate sections of Chapter 76.

Unfortunately, Chapter 76 does not contain a number of fundamental rules necessary for the application of the law. For example, the moment of emergence of the exclusive right to a commercial designation remained outside the scope of the project. Accordingly, it is not clear how a registrar or potential owner of a domain name will be able to conduct a preliminary check for the presence of a commercial designation or business name, so as not to violate the law (Article 1544 of the Draft). Unlike the provisions of the Draft, today the Law does not prohibit the registration of a domain name that is identical or similar to a trademark. Currently, violation of the rights of the trademark owner can only occur with a certain use of the domain name, which follows from the very concept of a trademark. The proposed draft proposes exactly this: to prohibit the inclusion of trademarks, trade names and commercial designations in domain names.

Conducting a check by the registrar organization or potential owner of a domain name for the presence of objects identical to those listed in Chapter 76 is currently impossible. It will lead to huge material costs on the part of all participants in the registration system, an increase in the time frame for registering domain names, and, as a result, to a loss of attractiveness of the Russian segment of the Internet. Such verification is not carried out in generic domains and other country code domains, just as there is no need for such verification due to the legislation in force in these countries. It is not the registration of domain names that is prohibited, but their use in a certain way, or not their use.

Responsibility for violation of the law will be borne jointly by both registrars and domain owners. Whereas all international documents relating to issues related to domain names contain provisions and recommendations that the procedure for registering domain names should protect the registrar from legal liability to the maximum extent and prevent it from becoming involved in a dispute. It should be noted that those wishing to register domain names in the .RU domain always have an alternative in the form of the opportunity to register a domain in other zones, therefore, the number of registrations in the .RU domain will be sharply reduced. The negative consequences of users moving to other zones is that it will be very difficult for the interested party to obtain information about the owner of the domain name from a foreign registrar. In addition, it will be problematic for a foreign registrar to be burdened with any actions by decision of a Russian court, for example, to withdraw a delegation to suppress the dissemination of any information that violates the rights of third parties, or to “seize” a domain in order to ensure the execution of a court decision, or to cancel its registration. A decrease in registration activity in the .RU domain will also reduce the flow of tax contributions to the budget of the Russian Federation.

In this Project, instead of the procedure for transferring domain names upon written applications of the owners, which is accepted in all national domains and general use domains, it is planned to conclude an appropriate agreement on the alienation of the exclusive right, the introduction of which will increase the cost and lengthen the registration process.

The introduction of a rule on a license agreement, on granting the right to use a domain name, presupposes a written form of the transaction and its registration, which contradicts the current procedure for allocating subdomains in all zones.

The question remains of determining the criteria according to which a domain name is considered unused for a certain period. In addition, deprivation of the right to a domain name on this basis seems unfair.

The introduction of a closed list of grounds for termination of rights to a domain name in the proposed form does not make it possible to continue the activity of registering domain names in the existing form, which has been accepted in the world community and developed over the years. So, for example, there is no such reason as the registrar not having reliable data about the owner of the domain name (failure to provide this data by the owner in the event of a change). A number of recommendations have repeatedly emphasized that the provision of contact information about the owner of a domain name is very important, since no steps can be taken or a procedure aimed at eliminating the consequences of violations can be initiated if there is no communication with the owner at fault, and therefore providing false contact information is a significant violation domain name registration agreement and grounds for cancellation of registration.

In connection with the above, we express the hope that the developers of the bill will pay attention to our position.

It is difficult to imagine a modern company without its own website. However, the law has not yet recognized the domain name as a means of individualization. What risks does a domain name owner have? How to protect your interests? What path does judicial practice follow when considering disputes between owners of trademarks and domain names?

The terms “domain” and “domain name” are widely used today and are known even to those who are not closely associated with the Internet. Currently, almost 5 million domains are registered in the “RU” domain zone, and almost 835,000 in the “RF” domain zone.

However, the domain has not yet received a legal definition, although attempts have been made.

The draft fourth part of the Civil Code of the Russian Federation (bill No. 323423-4), which was under consideration by the State Duma back in 2006, had a separate paragraph in Chapter 76 on domain names. In accordance with it, the domain name acquired its own legal regulation and became an independent object of exclusive rights on a par with a company name, trademark and other means of individualization.

However, this paragraph was excluded from the draft. Various reasons are given. For example, Vitaly Kalyatin, a researcher in the field of domain names, wrote in his blog: “The draft law, which in principle excludes the conflict of trademarks and domain names, turned out to be unacceptable for a business built on such a conflict.” Indeed, the lack of legal certainty in the status of a domain name is beneficial because it allows interested parties to use various methods of unfair competition and profit from it. In turn, the Coordination Center for the National Domain RU, the Regional Network Information Center (RU-CENTER) and the Russian Research Institute for the Development of Public Networks (RosNIIROS) in the conclusion to the project indicated that “it is inappropriate to classify domain names as means of individualization within the framework of the institution of intellectual property , since the main function of a domain is to simplify communication between computers, and the protection of the rights of domain name owners should be implemented in other ways without giving domain names the status of an object of exclusive rights.” One way or another, today a domain name is mentioned in the norms of the Civil Code of the Russian Federation on methods of exercising the exclusive right to a trademark, when the verbal designation of a trademark is used in a domain name or in methods of exercising rights to appellations of origin of goods.

Thus, the domain name currently, unfortunately, remains only a method of addressing on the Internet, and therefore continues to be used for the purposes of unfair competition.

The administrator of the national top-level domains “RU” and “RF” is the ANO “Coordination Center for the National Internet Domain” (hereinafter referred to as the Center). Domain registration services are provided to end users by registrars accredited by the Center. The procedure for registering a domain name is established by the Rules for registering domain names in the “RU” and “RF” domains, approved by the Center. Thus, he has broad powers in the field of domain names and his main task is to ensure the reliable and stable functioning of the infrastructure of the Russian segment of the Internet.

The procedure for registering domains today is application-based. That is, the first user to apply to register a domain will become the domain administrator if all the registrar's requirements are met.

The registration procedure is established directly by the registrar in documents posted on the website

Using the example of the rules established by the registrar of Naunet SP LLC, the initial registration of a domain name occurs in the following order.

1. Choosing a domain name. On the website of each registrar you can check whether the selected domain name is taken or free. If the selected domain is busy, the service will provide information about the registrar that registered the corresponding domain and offer the opportunity to contact the domain administrator.

2. Conclusion of an agreement for the provision of services. Such an agreement is most often concluded by filling out a registration form on the registrar’s website. It should be noted that by its nature the above agreement is public, which, by virtue of Art. 426 of the Civil Code of the Russian Federation means that it must be concluded with anyone who applies for its conclusion.

3. Filling out the application. If the selected domain name is not occupied by anyone, then you should fill out a form indicating contact information and identifying information (including passport information). Please note that for the domain name registration service, filling in the fields with passport data is mandatory.

4. Domain name registration. If all fields in the application are filled out correctly, then a letter is sent to the specified email address indicating the data for activating the service and a service card, including the necessary recommendations for setting up the service, links to the user manual and other information. The domain name registration period is one year, and the administrator has the right to renew the registration period an unlimited number of times.

After the activation steps, the registration service is considered provided, and the applicant acquires the status of a domain name administrator, subject to payment for the registrar's services.

Thus, the process of registering a domain name does not require significant labor costs and a lot of time.

Problems may be hidden behind the apparent simplicity of registering a domain name.

One of the most common difficulties faced by users at the stage of registering a domain name is the administration of the selected domain by another user.

If a company wants its domain name to coincide with the verbal designation of a trademark it already owns, then it can file a lawsuit to free the domain.

For example, Russian Railways OJSC filed a lawsuit against an individual demanding protection of exclusive rights to a trademark, a ban on using the Russian Railways trademark in a domain name, and the transfer of administrator rights (case No. A40-5128/2013).

The claims were justified by the fact that the defendant, without the consent of the copyright holder, illegally uses in the domain name “rzd-shop.ru” the protected designation “rzd”, identical to the plaintiff’s trademarks, to offer goods for sale on the Internet and provide services similar to those in relation to of which the plaintiff has registered trademarks.

The court upheld the claim of Russian Railways OJSC, pointing out that the plaintiff, as the copyright holder, has the exclusive (priority, preferential) right to use its trademark in any way that does not contradict the law, including on the Internet, and the defendant is illegally using the plaintiff’s trademarks by posting them on the Internet, which has a real opportunity to attract potential consumers of the plaintiff’s products to its domain.

In such a situation, all norms of civil legislation and established law enforcement practice work for the owner of the trademark.

It all depends on the similarity to the point of confusion

In accordance with the provisions of Art. 1484 of the Civil Code of the Russian Federation, one of the types of use of the exclusive right to a trademark is its use on the Internet, including in a domain name.

Based on the meaning of Art. 1484 of the Civil Code of the Russian Federation, in order to establish the fact of illegal use of a trademark, it is necessary to identify the presence of confusing similarity of the designation used by the defendant with the registered trademark of the plaintiff and the homogeneity of the goods in respect of which the corresponding designation of the defendant and the trademark of the plaintiff are applied.

At the same time, a claim for the protection of rights to a trademark has judicial prospects in the event that the goods and services in respect of which the plaintiff uses the trademark belong to related classes of the International Classification of Goods in relation to goods and services in respect of which the administrator uses the domain name.

Accordingly, a person who has registered the corresponding domain and uses it to distribute related goods and services or does not use the trademark at all actually violates the exclusive rights of the trademark owner. Please note that the domain name does not have to repeat the trademark down to the letter - registration as a domain of a verbal designation that is confusingly similar to the corresponding trademark will be sufficient grounds. Among other things, not only the confusion will be illegal, but also the likelihood of such confusion among the consumer.

In this case, we recommend specifying as claims: a ban on the use of a designation that is confusingly similar to a trademark in a domain name, the cancellation of registration (termination of use of a domain name) or the transfer of a domain name registration to the owner of the corresponding trademark, the recovery of compensation for illegal use of a trademark.

Judicial practice shows that such disputes are almost always resolved in favor of the trademark owner (ruling of the Tenth Arbitration Court of Appeal dated March 10, 2015 No. 10AP-18145/2014 in case No. A41-56904/14, Ninth Arbitration Court of Appeal dated December 29, 2014 No. 09AP -49635/2014-GK in case No. A40-66173/14, dated December 29, 2014 No. 09AP-49635/2014-GK in case No. A40-66173/14).

However, if the goods or services of the plaintiff and defendant belong to different classes of the ICGS, then the court will most likely refuse to satisfy the claims.

At the same time, plaintiffs in these types of disputes should also pay attention to the following. When deciding whether his rights to a trademark are violated when the defendant uses a domain name, the court checks the presence of two conditions: firstly, the presence of confusing similarity of the domain name with the trademark, and secondly, unfair use of the domain name in relation to goods or services for the individualization of which a trademark is registered. In proving the defendant's bad faith, the plaintiff can prove that the domain name:

  • registered in order to interfere with its activities (unfair competition);
  • initially registered not for conducting business, but for subsequent resale or rental (so-called cybersquatting);
  • used by the defendant to create the impression of ownership of the plaintiff's trademark.

Thus, the plaintiff will have the burden of proving that the defendant uses the disputed domain name in relation to goods similar to the goods of the plaintiff - the owner of the trademark, that the defendant is engaged in a similar type of activity as the plaintiff, as well as the defendant’s bad faith.

The defendant, in turn, has the burden of proving that the domain name is used lawfully by it, or that the registration of the disputed domain name was not intended to mislead consumers of the defendant’s goods about the plaintiff’s activities, and also that the defendant never did not post on the website any information that could create a false opinion among consumers regarding the plaintiff’s products or the nature of its activities.

For example, during the consideration of the case of Nova LLC v. Zhiltsova N.S. (case No. A40-105018/2014) the following situation developed.

The plaintiff is the holder of exclusive rights to the NOVA trademark in relation to goods: metal gates, structures, pipelines; fur; non-metallic doors, door frames, frames, panels, beams, fences, fences, cornices, window frames, window frames.

At the same time, the administrator of the domain name nova.rf is N.S. Zhiltsova.

During the trial, the defendant proved that she is a published writer, the author of eight books; she acquired the disputed domain to post information about works in a new genre for herself - space novels, a series of which the author is currently planning for publication. The choice of domain name was due to the fact that the first of the novels, information about which was planned to be posted on the site, is called NOVA. It was planned to open the site by the time the book of the same name was published.

The court refused to satisfy the plaintiff’s claims, pointing out that there was no evidence that the acquisition of rights to administer the domain name “nova.rf” on the part of the defendant was intended to acquire advantages for the promotion of goods and services similar to the goods and services in respect of which it is presented legal protection of the plaintiff's trademark. The court considered that the defendant does not carry out any business or other economic activity through the administration of the domain name “nova.rf”.

Thus, the absence of bad faith in the actions of the defendant and his conduct of activities different from the activities of the plaintiff is grounds for refusing to satisfy the claims of the trademark owner (resolution of the Ninth Arbitration Court of Appeal dated February 27, 2015 No. 09AP-1205/2015-GK in case No. A40-105018/2014).

Judicial practice has changed in favor of domain name owners

If a company wants to register a domain name that belongs to a third party, but the corresponding trademark has not been registered.

In this case, you can register a domain name, the verbal designation of which differs from the already occupied domain by some letter or number, or try to buy the domain from the administrator.

However, if a company uses a trade name that is not registered as a trademark, and does not want someone else to use a similar domain or someone else's domain to be the same as the business name, then you can do the following.

You can register a verbal designation of a domain name as a corresponding trademark or business name, and then file a claim in court to prohibit the use of a designation that is confusingly similar to the trademark in the domain name, to cancel the registration, or to transfer the registration of the domain name to the owner the corresponding trademark.

Some time ago, the courts were on the side of trademark owners, and this was often used not only by bona fide trademark owners to protect their rights, but also by unscrupulous entrepreneurs for the purpose of capturing popular and profitable domain names.

Based on the position set forth by the Presidium of the Court for Intellectual Rights in the resolution of March 28, 2014 No. SP-21/4, the court has the right to refuse to satisfy the request to terminate the use of a domain name if, according to the case materials, based on specific factual circumstances, the presentation of this demand may be classified as an abuse of right.

The presence of signs of abuse of rights may be evidenced by the fact that the person who registered the trademark has declared a request to prohibit the use of a domain name that uses a designation that previously became widely known thanks to the person who used this designation in the domain name.

The court may also refuse to satisfy the plaintiff’s claims if the defendant in the case proves that:

  • the defendant used or intended to use the domain name for the purpose of providing goods and services in good faith (resolution of the Ninth Arbitration Court of Appeal dated February 27, 2015 No. 09AP-1205/2015-GK in case No. A40-105018/2014);
  • the domain name administrator was widely known under the disputed domain name, even if he did not acquire the exclusive right to a trademark identical or confusingly similar to the domain name (resolution of the Ninth Arbitration Court of Appeal dated January 31, 2015 No. 09 AP-56345/2014 in case No. A40-60158/14);
  • using a domain name, the domain name administrator is engaged in legitimate non-commercial or other bona fide activities, without the intention of misleading consumers or harming the reputation of the plaintiff’s trademark (resolution of the Thirteenth Arbitration Court of Appeal dated December 24, 2014 No. 13AP-23268/2014 in case No. A56- 7889/2014).

You can check for matches for a small fee through various online services.

If the domain name chosen by the company is free for registration, then in order to avoid problems in the future, you should warn yourself against risks.

So, for example, if as a result of a search it turns out that someone has registered a trademark, the verbal designation of which is similar to the selected domain and which is used in relation to goods and services related to yours, then we recommend choosing a different domain name for registration. Otherwise, there is a risk of your company being sued with claims similar to those discussed above.

Moreover, if there is a corresponding trademark, but it has not been used for three years, then the company can apply to Rospatent and/or the court with a demand for early termination of the legal protection of the trademark on the basis of Art. 1486 Civil Code of the Russian Federation.

For example, V.V. Kovalev, being (since 2007) the owner of the domain name “technoshock.ru”, registered back in 2002, applied on January 11, 2011 to Rospatent with an application for early termination of the legal protection of the trademark “technoshock”, owned by Simtex Company CJSC, due to its non-use in relation to some of the services. By the decision of Rospatent dated March 28, 2011, the application of V.V. Kovalev was satisfied.

This decision was appealed in court (case No. A40-75222/11) and after a lengthy trial in several instances (after supervision by the Supreme Arbitration Court of the Russian Federation) it was declared legal (the court decision came into force on January 28, 2014). At the same time, the court indicated that the statement of V.V. Kovalev on early termination of legal protection of the trademark “technoshock” due to its non-use is aimed at protecting the rights of V.V. Kovalev. to the domain name.

At the same time, CJSC Simtex Company was unable to defend its position, despite the fact that the court also considered case No. A41-37023/10 on the company’s claim against V.V. Kovalev. about illegal use of their trademark, which was satisfied.

After satisfying the claim for early termination of legal protection of a trademark, you can safely register the selected domain name, protecting it by registration as a corresponding trademark.

If for some reason a company could not or did not want to register a trademark, then it exposes itself to certain risks.

In the future, another user may register a domain similar to the company's domain and then register a corresponding trademark for related products or services. Then such a user will have grounds to file a claim with your company to stop using the domain name.

In this case, it will not be easy for the company to defend its rights to the domain name. And the main argument in a legal dispute will be the good faith and duration of use of the domain name.

For example, in the trial in case No. A40-60158/14, the court refused to satisfy the claims of the copyright holder for the protection of exclusive rights to the LIFENEWS trademark.

OJSC NEWS MEDIA filed a claim with the Moscow Arbitration Court against an individual entrepreneur for a ban on using the LIFENEWS trademark in the domain name “live-news.ru” on the Internet.

The claim is motivated by the fact that the defendant, without the consent of the copyright holder, illegally uses in the domain name “live-news.ru” the protected designation “LIFENEWS”, which is identical to the plaintiff’s trademark, thereby causing confusion between different entities and misleading the consumer regarding the service provider.

Moreover, the trademark was registered by the plaintiff in 2010. In turn, the defendant is the owner of the domain name “live-news.ru” with priority dated April 4, 2008.

The court found that the defendant had been continuously carrying out business activities for a long period of time prior to the registration of the trademark by the plaintiff using an individualizing designation, including the verbal element “LiveNews”, and had become famous in a certain territory; The defendant's charter provides for his right to carry out activities to generate income. The court came to the conclusion that the actions of the plaintiff, expressed in the registration of a trademark in conjunction with the statement of these claims in court, bear signs of abuse of rights and are not subject to judicial protection by virtue of the provisions of Art. 10 Civil Code of the Russian Federation.

Thus, a user who has been using a domain name in good faith for a long time can protect his right in court.

In conclusion, I would like to say that to reduce the likelihood of such disputes, the best way today is to register a trademark, the verbal expression of which coincides with the selected domain. Although court practice has changed somewhat, litigation can take up a lot of your time and effort.