One of the first ever reverse domain name hijacking rulings issued

The Moscow Arbitration Court has upheld a decision of the Russian Federal Anti-Monopoly Service (FAS) that found Moscow-based company OOO Strelok-S (Strelok) guilty of reverse domain name hijacking.

A Moscow-based entrepreneur, Dmitry Sazonov, registered the domain name 'porta.ru' in 1999 and started to use it for an online store. In 2001, 'porta.ru' was ranked in the top 10 of online stores by some of the Russian media. That same year, Strelok filed trademark applications for PORTA and PORTA in Cyrillic characters for similar services to those provided by Sazonov. Shortly thereafter, Strelok contacted Sazonov and requested the transfer of the 'porta.ru' domain name, based on its trademark rights. Sazonov refused to do so and Strelok brought a trademark infringement claim before the courts against Sazonov pursuant to the Russian Trademark Law.

An amendment to the Russian Trademark Law, adopted in December 2002, expressly includes "the unauthorized use of a trademark on the Internet or within a domain name with respect to goods or services similar to ... [the] goods or services in association to which the trademark is protected" into the definition of 'unlawful use of a trademark'.

In response to Strelok's action, Sazonov filed a counterclaim with the FAS (at that time the Ministry of Anti-Monopoly Policy), and simultaneously filed a cancellation action against both PORTA trademarks with the Russian Trademark Office (TO). At the end of 2003, the FAS issued a decision stating that (i) Strelok's actions were an act of unfair competition, and (ii) allowing Strelok to acquire the domain name would give it an unjust advantage and damage Sazonov's goodwill. The FAS also concluded that both PORTA marks were registered in bad faith. Further to that ruling, the TO cancelled both trademarks.

The Arbitration Court has now upheld the decision of the FAS in what appears to be one of the first rulings issued by a Russian court on reverse domain name hijacking.

Pavel Arievich, Gowlings International Inc, Moscow