An overview of recent developments in Russian intellectual property law, as it relates to domain name registrations in Russia

1. Domain
name
disputes
in
Russia
Briefing
note
14
March
2013
New
Court
for
Intellectual
Property
Rights
Russia’s
new
Court
for
Intellectual
Property
Rights
started
operating
recently
and
it
marked
a
good
occasion
on
which
to
review
the
state
of
Russian
intellectual
property
law
as
it
relates
to
domain
names.
While
legislation
establishing
the
court
was
passed
in
2011,
judges
were
not
appointed
and
the
court
did
not
start
functioning
until
February
2013,
so
it
is
quite
new.
It
is
a
specialized
court
within
the
system
of
Arbitral
courts,
located
in
Moscow,
which
hears
disputes
related
to
intellectual
property
regardless
of
the
nature
of
the
legal
parties
to
the
dispute.
In
addition
to
being
the
court
of
first
instance
in
such
matters,
it
functions
as
a
cassation
court.
The
Russian
land
grab
The
“land
grab”
over
international
top-­‐level
domain
(TLD)
names
has
often
allowed
opportunistic
trademark
infringers
to
pre-­‐empt
legitimate
brand
owners.
Russia
is
no
exception,
and
one
of
the
prime
issues
faced
by
foreign
companies
and
brands
entering
the
Russian
market
—
whether
they
are
primarily
online
or
offline
players
—
is
securing
the
rights
over
their
domain
names
in
the
Russian
TLDs.
High-­‐profile
domain
name
disputes
in
Russia
have
involved
leading
international
companies
such
as
Nike,
Century
21,
Burger
King,
Forbes,
Kodak,
Volkswagen
and
many
more.
All
were
decided
in
favour
of
the
foreign
entity
although
the
process
and
length
of
the
dispute
procedures
has
varied
widely,
with
the
earlier
cases
taking
much
longer
to
decide.
As
the
precedents
accumulate,
enforcing
rights
over
Russian
domain
names
is
becoming
a
much
more
predictable
and
economical
process
for
foreign
companies.
Russian
Top-­‐Level
Domains
There
are
actually
three
Russia-­‐specific
TLDs,
namely:
• .ru
(“Russia”)
• .su
(“Soviet
Union”)
• .рф
(“Russian
Federation”
in
Cyrillic
script)
There
is
also
the
“.com.ru”
domain
administered
by
one
of
the
Russian
domain
registrars,
as
well
as
“.ru.com”.
Some
foreign
companies
which
find
themselves
shut
out
from
their
rightful
.ru
TLD
temporarily,
have
opted
to
establish
their
Russian
websites
on
these
less-­‐
than-­‐ideal
alternatives
(notably
PizzaExpress).

2. Legal
environment
There
is
no
Russian
law
specifically
covering
rights
to
Internet
domain
names.
Rather,
they
are
covered
under
the
existing
laws
related
to
intellectual
property
and,
in
particular,
trademarks.
The
main
law
regulating
this
sphere
is
Part
4
of
the
Civil
Code
of
the
Russian
Federation,
which
came
into
force
on
1
January
2008
(latest
amendment
-­‐
8
December
2011).
The
Kodak
case
of
2001
was
a
landmark
in
this
field
(the
core
of
the
case
being
the
use
of
a
trademark
in
a
domain
name).
The
court
decided
the
case
solely
on
the
basis
of
international
law
(namely.
the
Paris
Convention,
of
which
Russia
has
been
a
party
since
1965).
The
federal
law
on
trademarks
that
existed
at
that
time
did
not
provide
protection
against
the
use
of
a
trademark
in
a
domain
name.
Still,
the
court
prohibited
the
usage
of
the
domain
name
in
question.
Since
then,
the
Russian
courts
have
acquired
substantial
experience
in
resolving
intellectual
property
disputes
related
to
domain
names.
There
are
guidelines
of
the
highest
courts
on
such
matters
which
are
obligatory
for
lower
courts
to
follow
(even
though
—
officially
—
case
law
does
not
exist
in
Russia,
being
a
civil
law
country).
Court
proceedings
The
first
thing
to
ensure
is
that
you
have
registered
your
trademarks
in
Russia,
as
these
documents
must
be
submitted
to
the
court
in
order
to
commence
any
proceedings.
Under
the
old
system,
the
choice
of
court
for
intellectual
property
disputes
in
Russia
generally
depended
on
the
nature
of
the
violator,
as
opposed
to
the
nature
of
the
violation).
• The
State
Arbitral
(arbitration)
court
system
hears
commercial
cases
involving
legal
entities,
registered
private
entrepreneurs,
and
state
enterprises,
whereas
• The
common
(general)
court
system
hears
civil
disputes
between
natural
persons
who
are
not
registered
as
entrepreneurs,
and
also
hears
all
criminal
cases.
For
the
purposes
of
foreign
legal
entities
involved
in
domain
name
disputes
in
Russia,
the
arbitration
court
is
the
proper
choice
except
in
the
case
of
“substantial
damage”,
which
can
be
considered
a
felony
and
would
be
heard
by
the
general
court.
While
the
law
provides
that
administrative
rulings
can
be
made
solely
on
the
basis
of
written
submissions,
domain
name
disputes
do
not
fall
under
such
criteria.
There
is
also
the
possibility
that
the
arbitration
court
would
award
a
preliminary
injunction
prior
to
filing
and
hearing
the
court
case,
although
this
is
unlikely
to
happen
in
the
case
of
domain
name
disputes.
The
cases
where
courts
have
awarded
preliminary
injunctions
in
intellectual
property
disputes
are
highly
limited.

3. Initiating
a
claim
via
the
arbitration
court
is
fairly
straightforward,
and
the
procedural
rules
dictate
that
cases
must
be
decided
within
3
months
(although
they
are
usually
extended
to
4
months).
Delaying
tactics
are
often
employed
by
defendants.
However,
as
a
rule,
it
is
quite
difficult
to
extend
the
4-­‐month
period
under
the
arbitration
court
system
and
the
majority
of
cases
are
decided
within
this
time
limit.
The
only
case
where
it
can
be
extended
is
when
an
independent
expert
is
involved
(usually
this
occurs
when
trademarks
need
to
be
analyzed
as
to
similarity
with
the
original,
and
would
not
include
domain
name
disputes).
When
experts
are
involved,
the
period
can
be
extended
considerably
(8-­‐24
months).
For
foreign
entities,
in
addition
to
the
statement
of
claim,
they
must
submit
a
power
of
attorney
authorizing
a
local
person
to
represent
them.
This
representative
need
not
be
a
lawyer
-­‐-­‐
a
representative
of
a
legal
person
can
be
an
advocate
or
any
other
person,
providing
legal
assistance
(per
article
59
of
the
Arbitral
Procedure
Code).
Additionally,
certified
copies
of
incorporation
documents
and
registration
certificates
for
trademarks
and/or
patents
are
required
before
initiating
a
proceeding.
All
documents
must
be
translated
into
Russian
by
a
certified
Russian
translator.
Thus,
the
procedures
for
settling
domain
name
disputes
in
Russia
are
becoming
increasingly
transparent
and
predictable,
and
help
to
support
the
overall
growth
and
international
appeal
of
Russian
e-­‐commerce.
For
more
information
Interstice
Consulting
is
fully
equipped
to
register,
administer
and
enforce
domain
name
rights
in
Russia.
To
discuss
your
specific
case
with
our
experts,
please
contact
us:
Interstice
Consulting
LLC
Krasnoproletarskaya
ulitsa
31/1
Building
5,
Office
8
Moscow
127030
Russian
Federation
Tel:
+7
495
795
53
22
Email:
moscow@intersticeconsulting.com