Key person: Victoria Soldatova
The current CIS legislation features no clearly defined provisions regulating the rights to the domain names and domain dispute resolution rules, however, the rights to domains are traditionally disputed due to a violation of the rights to the trademark, as the use of a trademark in the Internet is foreseen and regulated by the legislation in CIS member states.
Therefore the use of the domain by a third party can be regarded as a trade mark infringement and the relevant court action can be taken. It’s worth mentioning that ccTLD for CIS countries are not part of the UDRP Administrative Procedure. Therefore under the existing legislation domain dispute resolution is implemented through filing the lawsuit with the court of the relevant jurisdiction. The court proceedings in CIS member states may involve three instances.
The each partcular domain dispute case might involve claiming the compensation for the damages incurred to the trademark owner. However, non-financial claims such as the ban on use of the domain by the infringer and transfer the domain to the legitimate trademark owner may be filed separately. In most domain cases it is advisable to request the interlucutory injunction with a view of preventing the transfer of the domain to other third party or even to other domain registrar that might complicate and prolong the court proceedings, since it might require to launch another court action starting from the first instance with the average timeframe of one court instance proceedings of 7-10 months.
The execution of the court decision is a separate stage of the court procedure and can take some time due to the underdeveloped practice in the countries of the CIS region.
According to the recent court practice in most of the domain dispute resolution cases the court is usually inclined to take the side of the trademark owner considering them as being prevailing and more important. However, the circumstances in each particular case should be considered, like, for instance, the date of registration of the domain as compared to the date when the trademark rights has been secured by the owner through registration. Furthermore, exploring the extent of use of the domain by the infringer for promotion of goods/services, which are homogenous or non-homogenous to those in respect of those the trademark has been registered is of importance when analyzing the chances of success of each particular case. The long term non-use of the registred domain by the owner should also be analyzed carefully, since in some cases the infringer/defendant may claim the expiration of the limitation period and the relevant provision of the law may be applied.
The experienced and highly skilled Attorneys of the IPR GROUP give a thorough in-depth analysis of all the circumstances of each particular case at the preliminary estimation stage, which allows to elaborate the most efficient and straightforward solutions tailored for the particular client and case and to facilitate smooth domain retrieval procedure avoiding all possible risks that might be incurred.