Registry must prevent trademark infringement

Russian Federation

The Presidium of the Russian Federation Supreme Arbitration Court has arrived at an important conclusion regarding the responsibility of the '.ru' domain registry, RosNIIROS, to ensure that domain name registrations do not violate the rights of trademark owners.

The registry's regulations provide that domain names are registered on a first-come, first-served basis, and that the registry is not obligated to ensure the legality of the registration.

However, over time the registry has been named as a co-defendant in a number of disputes, including those involving the domain names 'nivea.ru', 'coca-cola.ru' and 'kodak.ru', and as a third party in other disputes. In some cases, the registry was found to be liable for registering the disputed domain name, while in others it was excused of liability.

Thus, the Russian Federation Supreme Arbitration Court was asked to put an end to these contradictory judgments. It ruled that (i) the registry may be held liable in cases involving unlawful registration, and (ii) the courts may order the registry to cancel a registration and transfer the domain name to the plaintiff-trademark owner. To avoid any complications with cancelling registrations in future (and to avoid liability for the registration itself), the Supreme Arbitration Court recommended that the registry change its regulations to explicitly provide that it will cancel a registration as soon as it learns that the registration is unlawful.

Vladimir Entin, Klishin & Partners, Moscow

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