Villeroy & Boch Successfully Enforce its Rights

The popularity of famous trademarks still preys on the minds of some. Villeroy & Boch AG registered several trademarks in Russia (Nos 225414, 458472, 690541), and successfully traded on the market. Villeroy & Boch then noticed that goods bearing its trademarks were being sold online by an individual entrepreneur. Online trade is becoming increasingly popular, making it crucial for the law enforcement system to develop an efficient approach to address online infringements.

Villeroy & Boch sued the entrepreneur and the Corporate Domain Registrar (Rucentre). Rucentre is the registrar of the domain and provides hosting services for the site. The first instance Court forbade the entrepreneur from using the trademarks and selling the trademarked goods. The Court confirmed that the actions of the entrepreneur infringed the rights of the trademark owner. Rucentre claimed that it did not use the trademarks belonging to the Plaintiff and should not be involved in the case.

Rucentre appealed the judgment at the Court of Appeal, but the Court upheld the judgment of the first instance Court.

Rucentre appealed the judgment again, this time at the IP Court. In their cassation complaint, they explained that they were not the correct Respondent because they were only the administrator of the domain usmall.ru, but not the owner of the site. The owner of the site, according to Rucentre, was ShopfansRU LLC., with whom they had a contract. According to the general rule, the owner of the site and not the domain administrator should be liable for the use of the disputable designations.

The Supreme Court explained in its Resolution No. 10 in 2019 that the owner of the site is a person who directly uses the means of individualization. Thus, the owner of the site is the domain administrator unless the circumstances of the case indicate otherwise. In this case, the owner and the domain administrator were two different people.

The Court rejected Rucentre’s assertion that they are not the proper Defendant. The Court explained that responsibility for the contents of the site lies with the domain administrator. The use of the site’s resources is not possible without the control of the domain administrator, and it is the domain administrator who decides how the domain should be used. If the site owner does not fill the site themself but engages third parties, both the site owner and the third parties are jointly liable. However, in this case, the site owner has nothing to do with the unlawful use of the trademarks.

The Court upheld the judgments of the first instance Court and the Court of Appeal in January 2025.