Zuykov & Partners - Russia
The rapid rate at which the Internet has developed has led to an increase in cases of unfair competition and violations of IP rights in the online space. The most frequent situations are when a trademark owner identifies the existence of a domain name which uses a designation that is similar – to the point of confusion – to its own mark. This violates the exclusive rights of the owner and interferes with the promotion of its goods.
However, the rights holder, having requested information from the registrar about the domain name user, may encounter inaccurate contact information, such as the user’s phone number and location.
In this situation, the trademark owner has the right to request that the registrar initiate an administrator identification procedure. In accordance with Paragraph 2.5 of the Rules for Registering Domain Names in ‘.ru’ and ‘.pФ’ Domains (hereinafter referred to as the Domain Name Registration Rules), “the user (administrator) is obliged to provide the registrar with reliable information in the amount and manner established by the Rules and the contract, as well as to notify the registrar timely about changes in the information provided by him and to provide the registrar with supporting documents upon request”.
In accordance with Paragraph 9.3.7. of the Domain Name Registration Rules, “if the administrator fails to fulfil the request for information and documents within the prescribed period, the delegation of the domain name ceases, and the applications sent by the administrator related to the domain name (including applications for renewal of registration) are not executed until the request is completed” (emphasis added).
Moreover, in accordance with Paragraph 9.3.8. of the rules, “if the information intended to identify the administrator is unreliable, the registrar has the right to immediately terminate the delegation before sending the request by sending a notification to the administrator by e-mail” (emphasis added).
‘Domain name delegation’ is the placement and storage of information about a domain name and its corresponding DNS servers on TLD DNS servers, which is a prerequisite for the functioning of a domain name address on the World Wide Web. However, the termination of a delegation does not entail the removal of the site from the digital space. Instead, the site continues to operate, and the rights holder is unable to register a domain name itself and use this as a means of promoting its goods. Accordingly, the rights holder’s exclusive rights continue to be violated.
As such, the termination of a delegation is not the rights holder’s final goal, as the domain name will not be cancelled. However, the first step has been taken; the registrar (often a hosting provider) has been informed about the violation. Guided by Paragraph 8.1. of the Domain Name Registration Rules, the registrar has the right to cancel the registration of the domain name and, in case of refusal to do so, the rights holder can apply to the court to bring the registrar or hosting provider to justice.
Under Article 1253.1 of the Civil Code of the Russian Federation, in the case of violation of IP rights online, the information intermediary is liable if it is aware of a violation of a trademark owner’s exclusive rights and does not take measures to stop the violation. As such, the rights holder may go to court. But is this norm the basis for the protection of exclusive rights?
Paragraph 1, Article 1252 of the Civil Code states:
The protection of exclusive rights to the results of intellectual activity and to means of individualization is carried out, in particular, by presenting the requirements in the manner prescribed by this Code:
... 2) on the suppression of actions that violate the right or create a threat of its violation, - to the person committing such actions or making the necessary preparations for them, as well as to other persons who may prevent such actions. (Emphasis added.)
Thus, the rights holder can make demands to both the person who committed the unlawful act and any other person who can stop such actions (eg, the domain name registrar). This means that the rights holder can choose the method of protecting their exclusive rights by submitting a claim to the registrar or hosting provider.
According to the Supreme Arbitration Court of the Russian Federation, “along with the methods of protecting the exclusive rights of rights holders to the means of individualization listed in Article 1252 of the Civil Code of the Russian Federation, other methods of protecting these rights may be applied aimed at suppressing actions that violate the right, or creating a threat of its violation, which may include the cancellation of domain registration”. The court ruling goes on to state: “The requirement to cancel the registration of a domain is a special way to protect violated rights.” (Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation No 445/13, 4 June 2013, determination of the Supreme Arbitration Court of the Russian Federation No VAS-445/13, 13 March 2013.)
These rules give the registrar the right to suppress actions that violate the rights of third parties, including by terminating a delegation and cancelling a domain name.
The provisions of Paragraph 1(2), Article 1252 of the Civil Code, as indicated above, apply not only to the party committing the illegal actions or intending to commit them, but also to other parties that are able to stop these actions (eg, the domain name registrar or hosting provider).
As such, it seems that measures can be applied to oblige a domain name registrar to prevent the delegation of a domain name or withdraw it as part of a lawsuit to stop the violation of exclusive rights if the domain name is registered to a non-existent person or false information is provided about the user. In this case, it may not be about bringing to account the domain name registrar, but rather about applying measures to protect IP rights – and such measures can be applied to the domain name registrar.