Successful Representation of Client’s Interests in A Domain Name Dispute

Description

A reputable American company, being the owner of the largest international chain of restaurants, specializing in serving American fast food (Company), has the exclusive rights to series of registered trademarks united by the dominated word element (trademarks). The Company has granted to its Russian partner (Licensee) an exclusive license for the use of the trademarks for the purposes of opening, exploitation and development of the chain of restaurants on the territory of Russia and other countries. The license agreement was executed between the parties and registered with the Russian PTO.

The contract set forth certain rights and undertakings for the Company and Licensee. However, the Licensee has failed to perform certain financial obligations and contractual arrangements in terms of the development of the chain of restaurants in Russia. Therefore, the Company has served a default notice and then a termination notice to the Licensee by describing the necessity for such a termination and asking to immediately cease any use of the trademarks, including on the Internet. Further, the Company has filed an application for recordal of the termination of the license agreement with the Russian PTO and cancelled the contract in the unilateral manner by registering the termination fact with the Russian PTO.

Upon termination of the contract the Licensee has discontinued the use of the licensed trademarks in commerce as well as on the Internet, nevertheless, it maintained the registration of the domain name which was copying the word element of the trademarks (domain name). Moreover, the Licensee has posted certain defamatory content towards the Company on its web-site under the domain name.

As a result, the Company turned to Gorodissky & Partners as domain name litigation experts for the purposes of enforcement of the exclusive rights to the trademarks, repression of the Licensee’s unfair behavior and recapture of the domain name.

Solution

Within the scope of this matter, we have advised the Company on all legal aspects and judicial tactics related to the existence of the domain name registration dispute by offering the client the most effective domain name pre-trial and litigation strategies. In particular, we suggested the Company to serve a cease-and-desist letter to the Licensee (Respondent) and, after that, recommended the client filing a lawsuit with the competent court.

Prior to bringing a claim with the court, the lawyers of Gorodissky & Partners managed to obtain restraining orders in favor of the client – by way of submitting relevant motions with the Domain Name Registrar and the court – prohibiting the Respondent to secure domain name transfers, assignments and cancellations for the period of litigation. Also, we have prepared and filed a statement of claim with the court basing our claims on the valid concept of unfair competition and domain name resolution practice under the UDRP principles.

As a result, during the trial, we were able to prove the following circumstances: (i) the conflicting domain name is confusingly similar to the client’s trademarks; (ii) the Respondent has no rights or legitimate interests in respect of the conflicting domain name; and (iii) the Respondent is using the conflicting domain name in bad faith.

Result

Finally, the Company’s claims have been satisfied in full by the court of the first instance, and the Respondent has been enjoined from the illegal use of the trademarks. Further, the court ordered the Respondent to pay statutory damages to the benefit of the Company for the established infringement of the exclusive rights.

The decision of the first instance court has not been appealed in the appellate court and successfully entered into force allowing the client to have the preemptive right to register the domain name in the name of the Company and remove the defamation from the web.

The case is important because it may be regarded as another example (precedent) where the Russian court applies the UDRP approaches, which have been developed and recognized on the international level, in the context of .RU domain name dispute resolution.