Resolving domain name disputes and doing business online in Russia22 March 2017
Domain names started off purely as technical tools for identifying Internet Protocol addresses on the Internet. However, they have evolved into digital assets which help companies to engage in e-commerce. As valuable internet assets, it is important to take due care of them – whether on an international or a local level.
The importance of a well-balanced internal domain name policy is becoming increasingly obvious to online players. For instance, when a company decides to launch a new product or service on the market, it is crucial to consider the availability of a relevant domain name at an early stage. If a domain name which is identical or similar to a proposed brand has been fairly registered before trademark registration and is already being used by a third party, this may lead to conflict and be a serious bar to the coexistence of the trademark and the domain name.
The Internet Corporation of Assigned Names and Numbers’ (ICANN) decision to expand the list of available top-level domains (TLDs) has transformed the domain name landscape into a new one, opening up new opportunities in order to meet the needs of rights holders which found themselves unable to acquire suitable domain names in the past. However, the new TLDs have not entirely resolved the issue and comprehensive guidance is still needed to navigate local domain name management and litigation strategies efficiently.
This article analyses the domain name landscape in Russia, highlights important registration formalities and describes legal instruments which have been developed to combat cybersquatting and IP infringement issues.
Domain name landscape
Although domain names are governed internationally, each jurisdiction has its own specific regulations covering registration, transfer and dispute resolution issues at a country level.
In terms of country-code top-level domains (ccTLDs), ‘.ru’ and ‘.РФ’ (‘.rf’ in the Cyrillic alphabet) are the national domains assigned to Russia. In addition, the ccTLD ‘.su’ is still active, even though the Soviet Union was dissolved in 1991.
Second-level domains (2TLDs) such as ‘.com.ru’, ‘org.ru’ and ‘net.ru’ have been designated for special purposes and fields of use. In addition, some geographical domains – including ‘msk.ru’, ‘spb.ru’ and ‘sochi.su’ (covering the most developed and famous Russian regions) – are now available.
Further, a number of Cyrillic TLDs have been launched as part of ICANN’s expansion of the domain space. These include ‘.москва’ (Moscow), ‘.дети’ (children) ‘.онлайн’ (online), ‘.рус’ (rus), ‘.орг’ (org) and ‘.сайт’ (site).
Despite these new additions, domain names in the ‘.ru’ ccTLD are still the most popular, accounting for nearly 5.5 million registrations. In comparison, there are about 9,000 registered domain names in the TLD ‘.РФ’ and over 115,000 in the TLD ‘.su’.
Domain name registration
As is the case in many other countries, Russia applies the principle of first come, first served to all domain name registrations. More than 40 national accredited registrars are authorised to accept and consider domain name applications. Any individual or legal entity may apply to register a domain name in Russia, regardless of place of residence.
No special rules govern eligibility with regard to ownership of local domain names by overseas investors. Foreign companies or persons are not obliged to prove any prior rights or legitimate interests when registering a Russian domain name – they enjoy the same rights and opportunities as local applicants.
Registrars conduct no substantive examination (eg, to deselect variations, short forms or common misspellings). The applicant needs to meet only formal requirements in order to file and register a new local domain name.
The general term of protection for a domain name registration is one year, although this is extendable, provided that the owner keeps the domain name in use and is interested in the extension.
With regard to the management of the national new TLDs, prospective registrants can use the Trademark Clearinghouse (TMCH), which has been developed to monitor and block bad-faith domain name registrations by third parties.
Domain name dispute resolution
Sometimes domain names overlap with valid IP rights belonging to third parties. Such conflicts typically arise when a party registers a domain name which is identical or similar to a trademark or company name registered in Russia.
Russian law provides trademark and company name owners with effective civil law remedies against cybersquatting and typosquatting. Disputes over ‘.ru’, ‘.РФ’ and ‘.su’ domain names will be heard by Russian commercial courts or general courts. However, demand letters or letters of claim are mandatory when it comes to IP enforcement and must be dispatched before any commercial or civil procedure can be commenced.
Russia does not adhere to the Uniform Domain Name Dispute Resolution Policy (UDRP). However, the national court system supports the doctrine of unfair competition as well as widely recognised UDRP principles. Therefore, where a ‘.ru’, ‘.РФ’ or ‘.su’ domain name is registered or used in bad faith with the intention of profiting from goodwill associated with a trademark or company name (eg, the domain name does not direct to a particular website or content), the claimant may submit evidence to the Russian court that:
- the conflicting domain name is identical or confusingly similar to a trademark or company name in which it has rights;
- the respondent has no rights or legitimate interests in respect of the conflicting domain name; and
- the conflicting domain name has been registered or is being used in bad faith.
If the rights holder provides sufficient evidence and prevails in court proceedings, it can request injunctive relief in order subsequently to apply for the transfer of the domain name at issue.
If the website to which this domain name directs users is operating under a company name belonging to someone else or offering the goods or services for which the trademark has been registered by its owner, this may lead to a classic company name/trademark infringement suit. In this case, the competent court will consider the priority, as well as other circumstances associated with the domain name registration. With regard to the new Russian TLDs (eg, ‘.москва’, ‘.дети’ and ‘.онлайн’), any conflicts which arise can be settled under the UDRP procedure.
If the litigation goes in the claimant’s favour, it will be granted a pre-emptive right to register the disputed domain name. Monetary relief, such as regular or statutory damages, is also available and may be sought by the claimant during a civil action.
In general, domain name dispute resolution proceedings – including pre-trial and judicial actions – take between four and six months before a court of first instance. Further appeals, if subsequently filed, may lead to a year of litigation.
It is essential to create, register, manage and litigate domain names properly, both internationally and in Russia. In the latter case, local counsel can help international rights holders to take proper account of national procedures, policies and best practices.
Anyone considering doing business online in Russia should bear in mind the following recommendations:
- Carry out a thorough search for previously registered and used domain names, trademarks and company names when creating and developing a digital brand.
- Proactively register a few basic variations of your digital brand (ie, company names and trademarks) for offensive as well as defensive purposes.
- Regularly monitor the Russian domain name landscape, as well as the new Russian TLDs as these become available.
- Consider registering the same domain name in a different TLD if you miss out on the chance to register it in your first-choice TLD.
- Avail of watch services and TMCH services.
- Use the tools and procedures available under Russian law and national litigation practice to recapture domain names if these are registered by third-party infringers (eg, cybersquatters).
- Use the UDRP policies and procedures for conflicts involving international domain names or new Russian TLDs (eg, ‘.москва’, ‘.дети’ and ‘.онлайн’).