Finding of trademark infringement results in transfer of domain names to mark owner

Ukraine

The Kiev Commercial Court has held that use of the domain names 'vilpe.com.ua' and 'vilpe.net.ua', as well as use of the signs VILPE and VILPE INNOVATIVE AND EASY on the corresponding website, by Ukrainian company Marketing-Partner LLC infringed the trademark rights of SK Tuote OY, a Finnish manufacturer of fastening, roof and ventilating products (Case No 910/8223/14, November 26 2014). The court ordered that the local domain name registrar - a co-defendant in the matter - re-delegate the aforesaid domain names to the trademark owner.

The trademark owner's claims were based on two international trademarks (International Registrations Nos 1002639 and 1002641) covering "apparatus for ventilation". The defendant's website contained information on ventilation and ventilating systems.

It should be noted that the remedies available to the trademark owner that are expressly provided for by the existing Ukrainian laws do not include the transfer of the domain name. However, the court took into account that a civil law relationship may be governed by customs of trade, whereby the customs are rules that are not provided for by acts of civil law, but are practically established in certain areas.

According to the Law of Ukraine on Telecommunications, which created the Ukrainian domain name space, the allocation and provision of domain names shall be conducted according to international rules. The Policy of Public Domains of November 1 2013 issued by Hostmaster LLC, the manager of the '.ua' country-code top-level domain, acting on the basis of the rules established by IANA and ICANN, among others, provides that a change of information regarding a domain name (eg, a change in domain name holder) shall be done via an application from the domain name registrar to the registry.

In view of general principles of civil law such as fairness and reasonableness, and in the absence of relevant legislative remedy, the court relied on the principle of fair and efficient protection, and ordered the registrar to re-delegate the domain names to the trademark owner.

Previously, in many similar cases, the courts had rejected requests to re-delegate domain names based on the absence of relevant legislative remedy. However, this decision illustrates that the Ukrainian courts are changing their formal approach.

Julia Semeniy, Asters, Kiev 

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