The Russian internet comes of age

Evgeny Alexandrov of Gorodissky & Partners charts the meteoric rise of digital zones in Russia and the subsequent case law that has developed

The history of the internet in Russia is relatively short and goes back to the year 1994 when the .ru TLD was registered. Until recently, domain names in Latin characters could only be used in the Russian segment of the internet. However, a few years ago the Internet Corporation for Assigned Names and Numbers (ICANN) approved a new order for the creation of gTLDs and it became possible to register domain names in either Latin or non-Latin symbols (Cyrillic in Russia). It was one of the most expected options for the Russian-language speaking users how find it much easier to remember and use the name of a website in Cyrillic, rather than in a Latin transliteration of the words in Russian. Besides, as the former Russian president Dmitry Medvedev has said, it is very important for Russia to have domain names in Cyrillic to reinforce the role of the Russian language in the world.

The Russian users do not neglect other opportunities that are afforded by the internet. Along with the development of the internet, companies and non-commercial organisations feel the need to make the identification of their field of activity more clear to people. Many of those companies attempted to register domain names in the zones corresponding to their business. For instance, airports can register a domain name in the .aero zone, informational sources can use .info, travel agencies often use domain names in .travel , and so on. It is expected that in the near future registration of domain names in .moscow and .москва zones will become available. Obviously, these zones will be used for websites that are related to Moscow. This idea has been supported by the government of Moscow as it will provide new opportunities for spreading information about the city and make it more attractive for foreign people.

The general director of RU-CENTER, Alexey Panov, said: “We are doing everything possible so that our applications for domains ‘.moscow’ and ‘.москва’ (Moscow in Cyrillic) were approved by ICANN among others. Creating a metropolitan domain is a pilot project implemented in partnership with leading international experts, and giving the green light to the emergence of Russian geographical and commercial top-level domains.”

According to the Coordination Centre for the ccTLD .ru: “On 5 March 2011 the Skolkovo Foundation (so-called the Russian Silicon valley), dispatched a letter to ICANN wherein it expressed its intention to register the gTLD .skolkovo. Rod Beckstrom, the [former] ICANN CEO, noted the Russian business community’s keen interest in the new gTLD implementation programme, which provides for registration of new domain zones. While this programme has not yet been approved by the ICANN, Rod Beckstrom expressed confidence that the decision regarding this programme will be taken in the near future.”

Taking into consideration the success of the new Cyrillic domain .рф, it can be concluded that the ICANN initiative in respect of new gTLDs will be successful in Russia. Besides, the ICANN initiative will satisfy, at least temporarily, the appetites of domain name owners, who believe that existing zones have become too narrow.

In the meantime, wider options for registration of the domain names in different zones lead to the increase of the number of disputes that are connected with infringement of IP rights on the internet. The internet space currently lacks special legal regulation. Neither Russian law nor subordinate acts that are in force in Russia define the legal status of domains, their methods of use or their protection. Moreover, the Uniform Domain Name Dispute Resolution Policy (UDRP) or any similar procedures are not applied to Russian domain names. Disputes between the owners and the domain name administrators are considered by the courts and are governed by the general rules of jurisdiction and generally are handled by arbitrazh (commercial) courts.

According to the general rule provided by the Arbitrazh Procedural Code of Russia, the arbitrazh courts consider economic disputes arising between commercial legal entities or individual entrepreneurs in the field of their business activity. In most cases, if the parties to a dispute are commercial entities or entrepreneurs, the economic nature of the dispute is presumed. At the same time, the Arbitrazh Procedural Code of Russia provides a specific rule that says that internet and domain name disputes in which a foreign legal entity or a foreign entrepreneur is involved are under exclusive jurisdiction of the arbitrazh courts. In particular, by applying this rule, the arbitrazh courts consider cases that are initiated by trademark owners which are foreign companies, against domain name holders who are physical persons, for illegal use of trademarks in domain names.

The general trend of the court practice in Russia looks very positive for the trademark owners that may count on efficient enforcement of their IP rights, in particular trademarks, against cybersquatters. Moreover, according to recent cases, the Russian commercial courts are guided by the same principles that are applied by dispute resolution forums (for example the World Intellectual Property Organization Arbitration and Mediation Center) and the UDRP policy.

In particular, in 2011 the Supreme Arbitrazh Court considered a claim of G.H. Mumm & Cie (France) against a Russian individual, Yusupov. The plaintiff was the owner of the international trademark registration ‘MUMM’ covering Russia and registered in 1986 for goods in classes 32 and 33, inter alia, for wines and champagnes. Yusupov owned the domain name but did not use it for any commercial activities. The case passed all court instances up to the Supreme Arbitrazh Court and was finally resolved in favour of the trademark owner. According to the Resolution of the Presidium of the Supreme Arbitrazh Court No 18012/10 of May 2011, the court was guided by the following principles:
the domain name was identical to the registered trademark and was registered in 2009
the trademark was registered before the domain name, in 1920, and the owner has produced the products (wines and champagnes) under the trademark ‘MUMM’ since 1986
the domain name owner had no relation to the business of the trademark owner
the domain name owner did not have any right or legitimate interest with respect to the domain name
the domain name was registered in a bad faith
the trademark owner cannot use its trademark in the .ru zone.

The principles above fully correspond with the basic principles that are stated in the UDRP, as well as the Rules for UDRP. However, according to the WIPO Center, information regarding specific gTLD registries, and policies and procedures willll be applicable to domain name registrations within each corresponding domain space, including .aero, .asia, .travel, .biz, and so on.

Russian courts handle the cases that are connected with the local zones and do not consider the claims with respect to the international zones. However, their approach is gradually changing. In particular, in a case that was initiated by the largest Russian bank, Sberbank of Russia, against the owner of the domain names and, the court issued a decision in favour of the bank on the basis of its well-known trademark ‘Sberbank of Russia’, even though the disputes in these zones have never been considered in Russian courts before.

Considering the court practice and approach that are applied in the Russian courts, it may be concluded that the trademark owner can feel on the safe side and may rely on its trademark rights in disputes that are connected with squatting of the domain names that are identical or similar to their trademarks. Therefore, in order to ensure strong protection of a brand in the Russian segment of the internet, including in the light of ICANN’s new gTLD programme, it is advisable to check whether the trademark is duly registered in Russia, either under the Madrid system or through a national registration, or through the procedure of recognition of the trademark as well-known, since new options that have been provided by ICANN create new opportunities for cybersquatters against which a trademark could be used as a main tool, along with other IP rights. For example, company names will also be protected on the basis of Article 8 of the Paris Convention.
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