Russia does not have an ADR system for domain disputes and ccTLD disputes are decided by state courts. A lawsuit shall be filed in a court located at the defendant’s location/residence. There is no single court in Russia that handles domain disputes.
They can be handled by either general courts or Commercial (Arbitrazh) Courts. According to the clarifications from the Supreme Court of Russia in 2019 all disputes related to trademarks (including domain disputes) shall be decided by commercial courts.
A proper defendant in domain disputes is a registrant. If registrant’s identity is unknown, then the lawsuit can be filed at the location of the registrar and the registrar can be the initial defendant. Provisional measures (i.e. prohibition to transfer the domain name) are possible.
1. Obtaining info about registrant’s identity
In Russia any person can register .ru or .рф domain (there is no nationality or residence requirement). Usually no information about identity of a registrant is available in the “whois” database. In most cases you only see the following info: “Private Person” meaning that the registrant is an individual.
We normally advise first sending an attorney’s request for disclosure of registrant’s identity to the registrar but not all registrars agree to disclose such information. Some registrars refuse and rely on Russian personal data law and say that they can only provide such info with registrant’s consent or in court proceedings.
2. Legal basis and UDRP relevance in Russian ccTLDs proceedings
To succeed in ccTLD dispute in Russia the complainant needs to rely on IP rights valid in Russia (i.e. trademark, trade name, commercial designation, appellation of origin) but most common grounds are trademark rights.
Trademark use in Russia is defined as “use of a trademark or a similar sign in respect of identical or similar goods (services) if a confusion arises as a result of such use” and trademark use is inter alia “its use for individualizing goods, services, works including use on the Internet, including use in a domain name or other addresses”.
However, even when a disputed .ru domain name is not used and, hence, there is no proper trademark use, the plaintiff can still succeed.
For instance, there were .ru cases when a disputed domain name merely redirected to owner’s web site or a website by the disputed domain name contained short non-commercial information, when the infringement was found.
You should also take into account that (based on Russian court cases):
- Mere registration of domain can be an act of unfair competition and TM infringement
- Courts often apply article 10 of the Russian Civil Code (“abuse of right”) and article 10bis of Paris Convention in domain disputes in domain disputes
- Unfair competition principles can also apply to “non-competitors”, i.e. to individuals not involved into regular business
- To establish “honest practices” in domain registration courts rely on ICANN UDRP and Rules
- Domain name owner (registrant) may rely on his/her legitimate rights and interests
- Plaintiff’s claims may be rejected if a lawsuit is considered as abuse of right (RDNH) – i.e. if a domain name was already known in connection with registrant’s activities
Decisions of Russian courts in ccTLDs are not always consistent. There were cases when a disputed domain was registered before the trademark, but courts still found infringement. Sometimes courts located in different regions of Russia decide cases with similar facts in a different way. Damages can be obtained (actual amount depends on a case and specific infringement) and 1st instance proceedings normally take between 5-10 months.
3. No automatic transfer of a disputed domain
Even if the plaintiff succeeds there is no automatic transfer of the domain name (unlike in UDRP).
Additional steps are required to obtain transfer from the registrar once a court decision enters into legal force and it can take some time.
- UDRP provisions are still not included in Russian legislation but remain relevant and often cited or relied on in courts’ decisions in Russia;
- There are still contradictory decisions and conclusions by Russian courts, some courts may question similarity between TM and domain name;
- Despite current challenges the chances to succeed in domain disputes for trademarks owners in Russia are pretty high and we would encourage everyone to protect their IP rights in Russia;
- The best way to prevent Internet infringements in Russia is to obtain TM protection in Russia. Make sure you have effective trademark rights in Russia (i.e. EU TM will not help in domain dispute).