Successful Representation of the Client in the Dispute over the Illegal Use of the Trademark in the Domain Name and on the Internet
Client Fritz Egger GmbH & Co. OG (Austria)
Fritz Egger GmbH & Co. OG, a world-famous flooring manufacturer (hereinafter “Fritz Egger”), has exclusive rights to trademarks (hereinafter the “EGGER Trademarks”) and a trade name (hereinafter the “Trade Name”), both having a single dominant verbal element “EGGER.”
Fritz Egger has become aware that an individual entrepreneur (hereinafter the “Infringer”) illegally uses the EGGER Trademarks and the Trade Name in the egger.club Domain Name as well as on the www.egger.club website to offer for sale goods using the EGGER Trademarks.
Fritz Egger actively uses its Trade Name as a means of individualization of its legal entity and the EGGER Trademarks as a means of individualization of its Goods worldwide as well as on the Internet. The use of the Trade Name and the EGGER Trademarks by the Infringer misleads consumers about the Infringer’s association with Fritz Egger, while there is no such association at all.
As a result, to protect the exclusive rights to the EGGER Trademarks and the Trade Name and to cease bad faith conduct of the Infringer, Fritz Egger has contacted us as specialists in resolving disputes over the illegal use of trademarks in domain names and on the Internet.
Within this case, we have advised Fritz Egger on all legal issues and legal tactics in connection with the dispute over the illegal use of the EGGER Trademarks by offering the client the most effective strategies for a pre-trial and legal representation.
In particular, we have advised Fritz Egger to send a letter of claim to the Infringer and to record by a notary the use of the EGGER Trademarks on the website. Since the Infringer has not responded to the claim in any way, it has been then recommended that the client file a claim with a competent court.
We have prepared and sent a statement of claim to the Commercial Court of Saint Petersburg and Leningrad Region with a request for interim measures prohibiting the Infringer from transferring, alienating, and canceling the Domain Name during the consideration of this dispute by the court.
The statement of claim has been based on the concept of unfair competition, the practice of consideration of similar disputes under the UDRP principles and the norms of the Russian Civil Code and it contains the following claims: 1) to recognize the registration of the domain name as infringement of the client’s exclusive rights; 2) to prohibit the Infringer from using the EGGER Trademarks, including on the Internet, including in the egger.club Domain Name, without Fritz Egger’s authorization. 3) to compel the Infringer to transfer to Fritz Egger the right to administer the egger.club domain name within 14 calendar days from the date of the court decision becoming effective.
In addition, we have asked in the statement of claim that the court establish an astreinte—a court penalty for the Infringer’s failure to voluntarily perform the obligations established by the court decision.
The Rules for registering domain names in .RU and .РФ domains grant the person in whose favor the judgment is rendered (i.e., claimant/right holder) the priority right to register the domain name for himself. This particular case has been specific as the domain had been registered in the “club” zone and, accordingly, the priority right could not be exercised in relation to this domain since such a right exists in relation to domains in the “ru” and “рф” zones only. In this regard, it has been necessary to file a claim to compel the Infringer to transfer the right of administration. At the same time, the fine established by the court for each day of delay helps to encourage the administrator to transfer the domain voluntarily.
As a result, in the frame of the proceedings on case No. А56-116607/2020, we have managed to prove the following facts: (1) the disputed egger.club Domain Name is confusingly similar to the EGGER Trademarks; (2) the Infringer has no rights to or legitimate interests in the disputed egger.club Domain Name; and (3) the Infringer uses the disputed egger.club Domain Name in bad faith.
As a result, the Fritz Egger’s claims have been satisfied in full by the court of first instance. The Infringer has not appealed the decision of the first instance court, and it has become effective. The Infringer has voluntarily transferred the right to administer the egger.club domain to Fritz Egger.
This case is important since it is an example of a domain dispute in the .club zone, in relation to which the priority right of registration cannot be exercised, and it is also an example of applying such a tool as an astreinte.