The “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.
If your brand has any degree of international visibility, it is quite likely that it has already been registered in the Russian TLDs. Indeed, should you find that your desired domain name is actually available in the Russian TLDs (especially within the .ru space), it would indicate that your brand has an uphill battle to gain market recognition in Russia!
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 Domains
There 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).
There 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 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, to 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 set out by 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.
As for international law, the World Intellectual Property Organization (WIPO), a body of the United Nations, plays a role in resolving .com, .net and .org domain disputes as well as many country-specific TLDs. While Russia has been a member of WIPO since 1970, the Russian TLDs are not under WIPO’s purview.
For commercial disputes in Russia, there are two branches of the court system which could come into play:
- 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.
New Court for Intellectual Property Rights
The Court for Intellectual Property Rights 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. While legislation establishing the Court was passed in 2011, judges were not appointed and it did not start functioning until February 2013, so it is quite new.
The 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.
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 (who does not need to be a lawyer), as well as certified copies of their incorporation documents and registration certificates for their trademarks and/or patents. All documents must be translated into Russian.
A predictable process
Overall, 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.