Zuykov & Partners - Russia
The IP Court has upheld a decision by the Moscow Arbitration Court, as well as a resolution issued by the Ninth Arbitration Court of Appeal, and dismissed an appeal by entrepreneur Kornev Dmitriy Nikolaevich regarding the domain name ‘masterhold.ru’ and the combined designations MASTERHOLD and МАСТЕРХОЛД. The ruling ends a long-running dispute over the names.
In 2018 LLC Masterhold lodged a complaint alleging that Kornev’s use of its domain name ‘masterhold.ru’ and MASTERHOLD and МАСТЕРХОЛД was illegal as these were confusingly similar to LLC Masterhold’s means of individualisation.
On 15 October 2018, the Moscow Arbitration Court satisfied the claims lodged by Masterhold’s representatives and prohibited the defendant from using the disputed domain name and the means of individualisation – it found that these were confusingly similar to the plaintiff's trademarks and ordered it to transfer the domain ‘masterhold.ru’ to Masterhold.
Considering the actions of the first-instance court to be illegal, Kornev filed an appeal. In December 2018, the Ninth Arbitration Court of Appeal – having studied the case materials and listened to the positions of the parties – reversed the first-instance decision and dismissed Masterhold’s claims.
Masterhold appealed, as a result of which the dispute was considered by the Court of Cassation. During the judicial proceedings before the IP Court, Masterhold’s lawyers succeeded in cancelling the resolution of the Court of Appeal and directing the case to new proceedings, once again before the Ninth Arbitration Court of Appeal.
On 22 July 2019 – as the appeal petition was being reconsidered – the court ordered that the Moscow Arbitration Court’s October 2018 decision should be upheld and dismissed the appeal petition, thus recognising the legality of the claims lodged by LLC Masterhold.
However, Kornev still maintained that the court’s actions were illegal and accordingly filed a cassation petition before the IP Court. In support of his claims, he pointed to the fact that the disputed judicial acts had been adopted in violation of the norms of the procedural law, and the findings of the courts contradicted the actual circumstances of the case. In this regard, he asked that the Moscow Arbitration Court’s decision be cancelled and that the case be sent back for fresh consideration to a first-instance court.
In December 2019, the IP Court finally ended the dispute and dismissed Kornev’s appeal, ordering that the Moscow Arbitration Court’s decision of October 2018 and the resolution of the Ninth Arbitration Court of Appeal of July 2019 be upheld unchanged.