Selection of court decisions. Such different domain disputes
To date, the Russian courts have developed a specific practice for resolving domain name litigation. Thus, domain names are the main subject of litigation, and sometimes appear as optional. As a rule, such proceedings arise because of violations of the rights of the owners to the trademarks belonging to them. However, there are cases when actions of domain owners are recognized as a violation of the rights to a company name or to a commercial designation.
As established by Russian civil law, compensation for violations of the exclusive right to intellectual property can be from ten thousand to five million rubles. In court practice there are examples when a similar amount of compensation (for violation of rights to a trademark) was set by the court to the maximum - 5,000,000 rubles.
Judicial proceedings in such cases can be classified for several reasons. Below I give a classification based on the categories of intellectual property objects, the rights to which were violated by actions to administer domain names:
1. Domain name vs trademark
1.1. Domain name is identical to trademark
swatch.ru
Date of decision: 13.10.2010
Link to the solution: docs.pravo.ru/document/view/5216339
The heart of the matter: The plaintiff (Swatch AG) is the copyright holder of the SWATCH trademark. The domain was registered by the respondent after the priority of the rights to the TK. According to the court, although the domain has not been used and is not used, the fact of owning an Internet page, in the domain name of which contains a designation identical to a trademark, makes it possible for the defendant to attract to its page potential consumers of services similar to those for which the trademark used by the copyright holder. A graphic similarity was established between the TK and the domain.
Solution: transfer of the domain to the plaintiff, compensation for violation of the use of the TK - 10,000 rubles (the plaintiff requested 50,000 rubles).
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It should be understood that when it comes to the identity of the domain and the trademark / company name / commercial designation, I mean that the domain name completely coincides with the name of TK / FN / KO (and I do not take into account the domain name element constituting domain zone - .rf / .ru / .com, etc.). The courts, in turn, in most cases recognize such domains and TK / FN / KO as confusingly similar, but not identical.
Other examples include lawsuits regarding the domain higer.ru ( http://docs.pravo.ru/document/view/20775131/ ), ombrello.me ( http://sudact.ru/arbitral/doc/cXjBsGquwaVv / ).
1.2. The domain name is similar to the trademark to the point of confusion
Best of all, a similar category of cases is characterized by court proceedings, where the plaintiff was Alliance LLC in defense of the rights to its TK “ufarabota.ru”:
rabota-ufa.ru
Date of decision: 14.08.2009
Link to the solution: docs.pravo.ru/document/view/3597100
The essence of the case: the Claimant (LLC "Alliance") is the copyright holder of the trademark "ufarabota.ru". The defendant is the owner of the domain rabota-ufa.ru. The court established that the respondent's domain “rabota-ufa.ru” and the claimant’s TK “ufarabota.ru” are similar in phonetic and semantic features.
Solution: ban on the use of TK "ufarabota.ru" in the domain name "rabota-ufa.ru". Compensation - 100,000 rubles.
Alliance LLC did not stop there and won similar trials in the ufa.rabotavgorode.ru domains ( http://sudact.ru/arbitral/doc/93lgpwyR0fbm/ - the settlement agreement was approved) and rabota-ufa.info ( http: //docs.pravo.ru/document/view/15131736/ ).
Also, a domain name can be recognized as confusingly similar to a trademark, when someone else’s trademark is only a part of its name:
miraxa.net.ru
Date of decision: 19.10.2011
Link to the solution: docs.pravo.ru/document/view/20227310
The essence of the case: the plaintiff is the copyright holder of the TOR "MIRAX" and "MIRAX". The court established a similarity to the degree of mixing of individual elements of the domain with TK.
Solution: Ban the respondent from using TK in the domain miraxa.net.ru. The amount of compensation is 50,000 rubles.
2. Domain Name vs Brand Name
2.1. The domain name is identical to the brand name.
Kurskprombank.rf
Date of decision: 20.10.2011
Link to the solution: sudact.ru/arbitral/doc/Jib78IJQ4eom
The essence of the matter: The plaintiff demanded to stop using his abbreviated corporate name Kurskprombank in the domain name Kurskprombank.rf. The domain name was registered by the defendant later than the occurrence of the right of the claimant to the company name. The court established that when registering a domain, the verbal designation “Kurskprombank” was used, identical to the company name belonging to the plaintiff. The domain name "Kurskprombank.rf" was administered by the respondent - a person unrelated to the implementation of banking operations and did not receive the consent of the plaintiff to use his company name.
The defendant also did not have any legal rights and interests in relation to this domain name, as he did not own the trademark of the same name or company name, and the domain name does not reflect his name or the company name of his company. Nor did the defendant provide evidence of other legitimate interests in the use of the controversial notation.
What is interesting, according to the court, the defendant should have known that a legal entity, Kurskprombank OJSC, is registered in the city of Kursk, and the presence of the same-name domain in the Russian Internet sector can lead users into error. It is obvious that the complete coincidence of the second-level domain name with the company name of the claimant is an abuse of the technical uniqueness of the domain name.
Solution: the actions of the defendant are recognized as a violation of the claimant’s rights to the company name and it is prohibited for him to use the domain name “Kurskprombank.rf”.
Note: the case was reviewed in the Ninth AAC and the FAS of the Central District, but higher authorities confirmed the correctness of the decision of the court of first instance.
2.2. The domain name is similar to the company name to the point of confusion
traktornye-zavody.ru
Date of decision: 06.03.2013
Link to the solution: sudact.ru/arbitral/doc/gje0U5einiNx
The essence of the matter: The plaintiff is the copyright holder of the exclusive right to his company name - Limited Liability Company "Corporate management company Concern Tractor Plants". The defendant is the owner of the domain traktornye-zavody.ru. A linguistic examination was carried out, its result: in the company's name of the plaintiff the words “tractor plants”, identical to the domain name. The court concluded that there is a similarity between them. According to the court, one should not take into account the presence in the claimant’s company name of such words as “The corporate governance company“ Concern ”, since they do not focus on attention, unlike the words“ tractor factories ”. The plaintiff and the defendant are competitors, while the site traktornye-zavody.ru is used by the defendant to inform the consumers about the goods they sell, which are produced including by plants belonging to the Tractor Plants Concern. Therefore, the actions of the defendant were qualified as an act of unfair competition.
Solution: prohibiting the defendant from using the domain name traktornye-zavody.ru.
Note: The hearing in the appeals instance will be held on May 28, 2013.
3. Domain name vs commercial designation
defense-e.ru
Date of decision: 01.06.2012
Link to the solution: ras.arbitr.ru/PdfDocument/e1a495d2-ecb4-4d6c-bdb1-0925913b0758/%D0%9060-15926-2012__20120601.pdf
The essence of the case: The respondent on 31.01.2008 registered the domain defence-e.ru for the purpose of the further sale of the domain name. The plaintiff demanded the transfer of rights to this domain name on the basis of the fact that he owns the rights to the business designation "La Defense". However, due to the peculiarities of the emergence of rights to a commercial designation, the court recognized that such rights arose for the claimant only after 13.07.2010 - the date of registration of the claimant as a legal entity. Thus, the right to use the domain name defence-e.ru arose from the defendant much earlier than the date of registration of the plaintiff in the Unified State Register of Legal Entities.
Solution: the claim was refused.
Note: it came to the FAS of the Ural district, but the decision of the court of first instance was left unchanged.
4. Domain Name: trademark vs trademark
lyudidela.rf
Date of decision: 05/04/2013
Reference to the decision: sudact.ru/arbitral/doc/6AcpIJPfArdu
The essence of the case: the Claimant is the copyright holder of the “People of the Cause” TK in respect of a number of works and services 09, 14, 28, 35, 36, 38, 39, 42, 43 classes of the Nice Classification. The defendant is the legal owner of the TZ "People Dela" in relation to goods of classes 16, 41, 42 of the Nice Classification. The defendant, being the administrator of the domain name “Lyudidela.rf”, posted on the site information about the search and recruitment services provided by the company “People Recruitment Agency”. In turn, the claimant is the owner of the exclusive right to the People of Business trademark in relation to those services (advertising agencies, advertising, employment bureaus, staffing, advice on business management (35 class ICGS) provided by a third party - LLC “Recruitment Agency“ People of Business ”, including using the site“ people ”, the administrator of which is the defendant. At the same time, a comparative analysis of trademarks according to the testimony of the plaintiff and the defendant indicates that the specified goods According to clause 6 of article 1252 of the Civil Code of the Russian Federation, if various means of individualization (including TK) are identical or similar to the degree of confusion, and as a result of this identity or similarity, consumers and / or counterparties, the means of individualization that the exclusive right to which has arisen earlier has the advantage.The holder of such an exclusive right may, in accordance with the procedure established by the Civil Code of the Russian Federation, demand that the legal protection be granted s trademark (service mark). Since the claimant’s trademark has priority on July 30, 2001 (priority is set by the date the application was received), that is, earlier than the defendant’s trademark (September 20, 2004), the possibility of misleading the consumer due to the similarity of services provided by the claimant and a third party, as well as the trademark of the plaintiff and the defendant, installed, therefore, the advantage has the trademark of the plaintiff, in connection with which the claims are subject to satisfaction.
Solution: Prohibiting the defendant from using the claimant’s TK “PEOPLE OF THE CASE” in the domain name “lyudidela.rf”.
henco.ru
Date of decision: 04/26/2012
Link to the solution: kad.arbitr.ru/PdfDocument/50cb88b5-4c2f-4001-bae2-a8d8ab6a8fc3/A41-10659-2010_20121022_Reshenija%20i%20postanovlenija.pdf
The essence of the case: the Claimant is the copyright holder of the Henco TK. The defendant is the copyright holder of the TK “HENKO”. The plaintiff considered that the actions for registration and administration of the domain name “henco.ru” by the respondent are an abuse of right. However, the court concluded that the areas of activity of the parties have different directions; since the defendant and the claimant are owners of the Nonso trademark, both persons are equal owners of the TK and therefore can use it by all means provided for by the legislation (including in the domain name); therefore, the argument of the claimant about the abuse of the right by the respondent is not accepted by the court. In addition, the plaintiff believed that the defendant had in fact created obstacles to him for registering a domain that reproduced the trademarks belonging to him, which did not allow the plaintiff to exercise legal rights to trademarks in the Russian segment of the Internet. But, as the court rightly pointed out, the plaintiff was not deprived of the opportunity to become the administrator of the domain name in the domain name “.”. According to the court, the plaintiff did not prove the fact that the defendant does not have any legal rights and interests with respect to the domain name and that he uses the domain name in bad faith.
Solution: the claim was refused.
Note: This trial has a long history . Above was given the decision of the court of first instance, the correctness of which was confirmed in higher instances.
5. Domain Name: trademark vs brand name
See below in the text the dispute regarding the domains of lad-m.ru and ladm.ru , since in that case the claimant indicated that the actions of the defendant violated his rights both to the company name and to trademarks. But the court refused to satisfy the claims of the claimant in the protection of trademark rights, since the domains were registered for the defendant before registering the rights of the claimant to the LAD-M and LADM trademarks and prior to the emergence of priority on them.
6. Domain Name: Trademark vs Commercial Designation
prontopizza.ru
Date of decision: 31.08.2012
Link to the solution: kad.arbitr.ru/PdfDocument/07ebb335-8999-4c72-b85a-6c7be6ee82ed/A43-15155-2012_20120831_Reshenie.pdf
The essence of the matter: The plaintiff is the copyright holder of the TK “PRONTO”, the defendant is the commercial designation of “Pronto PIZZA e PASTA” and the above-mentioned domain. Due to the fact that the visual image was widely used in the respondent’s business activities prior to the date of the claimant’s trademark priority (May 23, 2007), the claimant, as the trademark owner, has no right to prohibit the use of the controversial designation to a person who conscientiously applied it to individualize their enterprise before trademark. Moreover, the court stated the following: in spite of the fact that the trademark is registered, the actions of the claimant aimed at its registration, on the basis of the above
factual circumstances constitute an abuse of right.
Solution: to refuse the claim.
7. Domain Name: Brand Name vs Brand Name
lad-m.ru and ladm.ru
Date of decision: 08.12.2009
Link to the solution: www.arbitr.ru/bras.net/f.aspx?id_casedoc=1_1_00ce1c87-ae9b-4cf4-8999-54e43b3da84c
The essence of the case: the Applicant is the copyright holder of the TK “LAD-M” and “LADM” (certificates No 335306 and 337921).
The defendant administers the domain name “ladm.ru” from 04/20/2004, and the domain name “lad-m.ru” from 02.05.2006.
Decision: the decisions of the lower courts were canceled, the respondent’s actions on the domain name administration lad-m.ru and ladm.ru were found to be a violation of the rights of LAD-M CJSC to the company name, the respondent was forbidden to use these domain names.
8. I would also like to draw the following interesting aspects that have emerged in judicial practice:
8.1. The owner of the domain name offered to the trademark owner (or unlimited circle of persons) to purchase a domain name from him
svetaled.ru
Date of decision: 12.12.2012
Link to the solution: sudact.ru/arbitral/doc/U93q5pcgror1
The essence of the case: the Claimant is the copyright holder of the SvetaLED TK. The defendant is the owner of the above domain. 06/23/2011 he sent the plaintiff a commercial offer to purchase a domain name “svetaled.ru” for 3,000,000 rubles. The domain name used by the defendant is registered after it after the registration of the claimant’s TK. A website on the Internet with the domain name “svetaled.ru” is actually used by the respondent to post information about similar products for which the claimant’s TK is registered.
Solution: prohibiting the defendant from using the trademark “SvetaLED” or a designation similar to it to the point of confusion in the domain name “svetaled.ru”.
media.su
Date of decision: 10.03.2010
Link to the solution: docs.pravo.ru/document/view/4275864
The essence of the case: the Claimant is the copyright holder of the TK "Media Markt" and "Media Markt". On the website of mediamark.su, without the consent of the Claimant, its TK is used. In addition, this site contained an offer for the sale of a domain name, namely, information that the domain name of media-markt.su is being sold and the email addresses for communication are indicated. In addition, the site contained links to the websites of companies selling electrical household goods (thus, the domain name was used by the respondent in relation to goods similar to goods protected by the claimant’s TK).
Solution: the actions of the defendant on the registration and use of the domain name media.markt.su recognized abuse of the right. The defendant was forbidden to use the designation “Media Markt” in the domain names, as well as on the pages of the websites, for goods and services in respect of which the claimant’s TK was registered.
8.2. Subjects of proceedings in the Russian courts are domains not only in the zones RU / SU / RF
miraxanet.com - docs.pravo.ru/document/view/26318331 - compensation of 50 000 rubles
bolshoi.me - sudact.ru/arbitral/doc/KojocSu7ZVUp - compensation of 10,000 rubles
ombrello.me - sudact.ru/arbitral/doc/cXjBsGquwaVv - compensation of 60,000 rubles
mirax.me and mirax.tv - sudact.ru/arbitral/doc/3PKqocf5NnVx - compensation of 50 000 rubles
hansa-lex.info - docs.pravo.ru/document/view/3247747 - compensation of 50,000 rubles
guahoo.org - sudact.ru/arbitral/doc/THawIyCJHANm
sberbank.org and sberbank.biz - docs.pravo.ru/document/view/18513094 - 500,000 rubles
At the same time, in the case of the domain miraxanet.com, the defendant was a foreign citizen (citizen of Ukraine), but the case was considered in the ASGM, since the claimant has a Russian TOR “MIRAX”.
8.3. Successful plaintiffs (sued more than once, sued successfully)
a. SP Starostin V.A.
onegagipertonik.ru
Date of decision: 19.10.2011
Link to the solution: docs.pravo.ru/document/view/20353087
The essence of the case: The claims of this plaintiff are among the most interesting on this topic. The plaintiff is the owner of TOR "ONEGA". Initially, they filed a lawsuit about this domain name. , , , «onegagipertonik.ru», «» ( , ), , .
: «onegagipertonik.ru», 5 000 000 ( – !).
— onegamed.ru ( ), 5 , 500 000 .
b. «»
kamaz-nsk.ru ( http://sudact.ru/arbitral/doc/XCnvCMkdOsxr/ ), obves-kamaz.ru ( http://sudact.ru/arbitral/doc/BOtcQuAtTeYG/ ), kamaz-02.ru kamaz-444.narod.ru ( http://sudact.ru/arbitral/doc/LFBnjRk02nJT/ ), kmazcentrservis.ru ( http://sudact.ru/arbitral/doc/V77ymksFzQm1/ ).
with. «»
: «ufarabota.ru» rabota-ufa.ru, ufa.rabotavgorode.ru rabota-ufa.info.
, . «» ( koza-dereza.ru — sudact.ru/arbitral/doc/5stYAK5cXHNn , ko3a-dere3a.ru — docs.pravo.ru/document/view/28541154 ) ( miraxa.net.ru — docs.pravo.ru/document/view/20227310 , miraxanet.com — docs.pravo.ru/document/view/26318331 ). , .
8.4.
a. 100 000
alviz.ru — sudact.ru/arbitral/doc/mudTdG5lPKQ8 — 100 000
alviz.ru — docs.pravo.ru/document/view/26255994 — 100 000
uma.msk.ru – docs.pravo.ru/document/view/3630894 — 100 000
autolunch.ru — sudact.ru/arbitral/doc/RnZdY2uUk7on — 100 000
navitel.ru — sudact.ru/arbitral/doc/LhEWojkNpbJR — 100 000
terrinco.ru — docs.pravo.ru/document/view/21038285 — 100 000
. — docs.pravo.ru/document/view/26523717 — 100 000
shelestowo.ru — docs.pravo.ru/document/view/25716004 — 100 000
fujikura.su — docs.pravo.ru/document/view/10635174 — 100 000
lafei-nier.ru lafeinier.ru — docs.pravo.ru/document/view/10526771 — 100 000
louisvuittonstore.ru — sudact.ru/arbitral/doc/aOQ0y875dVlu — 100 000
mexx.ru — sudact.ru/arbitral/doc/jUHcyV7lH6Wg — 150 000
vefk.ru — sudact.ru/arbitral/doc/KDsbkHcQt4Vm — 190 000
icq.ru — sudact.ru/arbitral/doc/I0xJLd5YXxWj — 200 000
osnova.ru — docs.pravo.ru/document/view/3656563 — 225 000
renesa-market.ru — docs.pravo.ru/document/view/28727902 — 250 000
ak-verdikt.spb.ru — docs.pravo.ru/document/view/20930874 — 250 000
kamaz-02.ru kamaz-444.narod.ru — sudact.ru/arbitral/doc/LFBnjRk02nJT — 250 000
cesab.ru — docs.pravo.ru/document/view/1563457 — 500 000 ( 300 000 )
b. 500 000
mvidio.ru — docs.pravo.ru/document/view/32760387 — 500 000
kamaz-nsk.ru — sudact.ru/arbitral/doc/XCnvCMkdOsxr — 500 000
bacus2006.ru — docs.pravo.ru/document/view/29738860 — 500 000
onegamed.ru — sudact.ru/arbitral/doc/4jsxE2yxDO5K — 500 000
sberbank.org sberbank.biz — docs.pravo.ru/document/view/18513094 — 500 000
c. 1 000 000
severstalspb.ru — sudact.ru/arbitral/doc/zzHEGOIeksoe — 1 000 000
wegoma.ru wegomarus.ru — kad.arbitr.ru/PdfDocument/456b3790-cbe5-4338-8ac3-1b459e1a1c9d/A76-22148-2010_20120215_Reshenija%20i%20postanovlenija.pdf — 1 000 000
. — docs.pravo.ru/document/view/21969282 — 1 350 000
onegagipertonik.ru — docs.pravo.ru/document/view/20353087 — 5 000 000
8.5. ,
, , :
sexvideogid.ru — sudact.ru/arbitral/doc/UxH6xq3n7wxv — .
koza-dereza.ru — sudact.ru/arbitral/doc/5stYAK5cXHNn — – 75 000 .
. — sudact.ru/arbitral/doc/USIGzYrPXBYv — ( : – « », – « »).
, , , ( : headhuhter.ru , . ), , – – ( advocatekim.ru , . , , , , ).
- ? , .
PS Dura Lex .
As established by Russian civil law, compensation for violations of the exclusive right to intellectual property can be from ten thousand to five million rubles. In court practice there are examples when a similar amount of compensation (for violation of rights to a trademark) was set by the court to the maximum - 5,000,000 rubles.
Judicial proceedings in such cases can be classified for several reasons. Below I give a classification based on the categories of intellectual property objects, the rights to which were violated by actions to administer domain names:
1. Domain name vs trademark
1.1. Domain name is identical to trademark
swatch.ru
Date of decision: 13.10.2010
Link to the solution: docs.pravo.ru/document/view/5216339
The heart of the matter: The plaintiff (Swatch AG) is the copyright holder of the SWATCH trademark. The domain was registered by the respondent after the priority of the rights to the TK. According to the court, although the domain has not been used and is not used, the fact of owning an Internet page, in the domain name of which contains a designation identical to a trademark, makes it possible for the defendant to attract to its page potential consumers of services similar to those for which the trademark used by the copyright holder. A graphic similarity was established between the TK and the domain.
Solution: transfer of the domain to the plaintiff, compensation for violation of the use of the TK - 10,000 rubles (the plaintiff requested 50,000 rubles).
')
It should be understood that when it comes to the identity of the domain and the trademark / company name / commercial designation, I mean that the domain name completely coincides with the name of TK / FN / KO (and I do not take into account the domain name element constituting domain zone - .rf / .ru / .com, etc.). The courts, in turn, in most cases recognize such domains and TK / FN / KO as confusingly similar, but not identical.
Other examples include lawsuits regarding the domain higer.ru ( http://docs.pravo.ru/document/view/20775131/ ), ombrello.me ( http://sudact.ru/arbitral/doc/cXjBsGquwaVv / ).
1.2. The domain name is similar to the trademark to the point of confusion
Best of all, a similar category of cases is characterized by court proceedings, where the plaintiff was Alliance LLC in defense of the rights to its TK “ufarabota.ru”:
rabota-ufa.ru
Date of decision: 14.08.2009
Link to the solution: docs.pravo.ru/document/view/3597100
The essence of the case: the Claimant (LLC "Alliance") is the copyright holder of the trademark "ufarabota.ru". The defendant is the owner of the domain rabota-ufa.ru. The court established that the respondent's domain “rabota-ufa.ru” and the claimant’s TK “ufarabota.ru” are similar in phonetic and semantic features.
Solution: ban on the use of TK "ufarabota.ru" in the domain name "rabota-ufa.ru". Compensation - 100,000 rubles.
Alliance LLC did not stop there and won similar trials in the ufa.rabotavgorode.ru domains ( http://sudact.ru/arbitral/doc/93lgpwyR0fbm/ - the settlement agreement was approved) and rabota-ufa.info ( http: //docs.pravo.ru/document/view/15131736/ ).
Also, a domain name can be recognized as confusingly similar to a trademark, when someone else’s trademark is only a part of its name:
miraxa.net.ru
Date of decision: 19.10.2011
Link to the solution: docs.pravo.ru/document/view/20227310
The essence of the case: the plaintiff is the copyright holder of the TOR "MIRAX" and "MIRAX". The court established a similarity to the degree of mixing of individual elements of the domain with TK.
Solution: Ban the respondent from using TK in the domain miraxa.net.ru. The amount of compensation is 50,000 rubles.
2. Domain Name vs Brand Name
2.1. The domain name is identical to the brand name.
Kurskprombank.rf
Date of decision: 20.10.2011
Link to the solution: sudact.ru/arbitral/doc/Jib78IJQ4eom
The essence of the matter: The plaintiff demanded to stop using his abbreviated corporate name Kurskprombank in the domain name Kurskprombank.rf. The domain name was registered by the defendant later than the occurrence of the right of the claimant to the company name. The court established that when registering a domain, the verbal designation “Kurskprombank” was used, identical to the company name belonging to the plaintiff. The domain name "Kurskprombank.rf" was administered by the respondent - a person unrelated to the implementation of banking operations and did not receive the consent of the plaintiff to use his company name.
The defendant also did not have any legal rights and interests in relation to this domain name, as he did not own the trademark of the same name or company name, and the domain name does not reflect his name or the company name of his company. Nor did the defendant provide evidence of other legitimate interests in the use of the controversial notation.
What is interesting, according to the court, the defendant should have known that a legal entity, Kurskprombank OJSC, is registered in the city of Kursk, and the presence of the same-name domain in the Russian Internet sector can lead users into error. It is obvious that the complete coincidence of the second-level domain name with the company name of the claimant is an abuse of the technical uniqueness of the domain name.
Solution: the actions of the defendant are recognized as a violation of the claimant’s rights to the company name and it is prohibited for him to use the domain name “Kurskprombank.rf”.
Note: the case was reviewed in the Ninth AAC and the FAS of the Central District, but higher authorities confirmed the correctness of the decision of the court of first instance.
2.2. The domain name is similar to the company name to the point of confusion
traktornye-zavody.ru
Date of decision: 06.03.2013
Link to the solution: sudact.ru/arbitral/doc/gje0U5einiNx
The essence of the matter: The plaintiff is the copyright holder of the exclusive right to his company name - Limited Liability Company "Corporate management company Concern Tractor Plants". The defendant is the owner of the domain traktornye-zavody.ru. A linguistic examination was carried out, its result: in the company's name of the plaintiff the words “tractor plants”, identical to the domain name. The court concluded that there is a similarity between them. According to the court, one should not take into account the presence in the claimant’s company name of such words as “The corporate governance company“ Concern ”, since they do not focus on attention, unlike the words“ tractor factories ”. The plaintiff and the defendant are competitors, while the site traktornye-zavody.ru is used by the defendant to inform the consumers about the goods they sell, which are produced including by plants belonging to the Tractor Plants Concern. Therefore, the actions of the defendant were qualified as an act of unfair competition.
Solution: prohibiting the defendant from using the domain name traktornye-zavody.ru.
Note: The hearing in the appeals instance will be held on May 28, 2013.
3. Domain name vs commercial designation
defense-e.ru
Date of decision: 01.06.2012
Link to the solution: ras.arbitr.ru/PdfDocument/e1a495d2-ecb4-4d6c-bdb1-0925913b0758/%D0%9060-15926-2012__20120601.pdf
The essence of the case: The respondent on 31.01.2008 registered the domain defence-e.ru for the purpose of the further sale of the domain name. The plaintiff demanded the transfer of rights to this domain name on the basis of the fact that he owns the rights to the business designation "La Defense". However, due to the peculiarities of the emergence of rights to a commercial designation, the court recognized that such rights arose for the claimant only after 13.07.2010 - the date of registration of the claimant as a legal entity. Thus, the right to use the domain name defence-e.ru arose from the defendant much earlier than the date of registration of the plaintiff in the Unified State Register of Legal Entities.
Solution: the claim was refused.
Note: it came to the FAS of the Ural district, but the decision of the court of first instance was left unchanged.
4. Domain Name: trademark vs trademark
lyudidela.rf
Date of decision: 05/04/2013
Reference to the decision: sudact.ru/arbitral/doc/6AcpIJPfArdu
The essence of the case: the Claimant is the copyright holder of the “People of the Cause” TK in respect of a number of works and services 09, 14, 28, 35, 36, 38, 39, 42, 43 classes of the Nice Classification. The defendant is the legal owner of the TZ "People Dela" in relation to goods of classes 16, 41, 42 of the Nice Classification. The defendant, being the administrator of the domain name “Lyudidela.rf”, posted on the site information about the search and recruitment services provided by the company “People Recruitment Agency”. In turn, the claimant is the owner of the exclusive right to the People of Business trademark in relation to those services (advertising agencies, advertising, employment bureaus, staffing, advice on business management (35 class ICGS) provided by a third party - LLC “Recruitment Agency“ People of Business ”, including using the site“ people ”, the administrator of which is the defendant. At the same time, a comparative analysis of trademarks according to the testimony of the plaintiff and the defendant indicates that the specified goods According to clause 6 of article 1252 of the Civil Code of the Russian Federation, if various means of individualization (including TK) are identical or similar to the degree of confusion, and as a result of this identity or similarity, consumers and / or counterparties, the means of individualization that the exclusive right to which has arisen earlier has the advantage.The holder of such an exclusive right may, in accordance with the procedure established by the Civil Code of the Russian Federation, demand that the legal protection be granted s trademark (service mark). Since the claimant’s trademark has priority on July 30, 2001 (priority is set by the date the application was received), that is, earlier than the defendant’s trademark (September 20, 2004), the possibility of misleading the consumer due to the similarity of services provided by the claimant and a third party, as well as the trademark of the plaintiff and the defendant, installed, therefore, the advantage has the trademark of the plaintiff, in connection with which the claims are subject to satisfaction.
Solution: Prohibiting the defendant from using the claimant’s TK “PEOPLE OF THE CASE” in the domain name “lyudidela.rf”.
henco.ru
Date of decision: 04/26/2012
Link to the solution: kad.arbitr.ru/PdfDocument/50cb88b5-4c2f-4001-bae2-a8d8ab6a8fc3/A41-10659-2010_20121022_Reshenija%20i%20postanovlenija.pdf
The essence of the case: the Claimant is the copyright holder of the Henco TK. The defendant is the copyright holder of the TK “HENKO”. The plaintiff considered that the actions for registration and administration of the domain name “henco.ru” by the respondent are an abuse of right. However, the court concluded that the areas of activity of the parties have different directions; since the defendant and the claimant are owners of the Nonso trademark, both persons are equal owners of the TK and therefore can use it by all means provided for by the legislation (including in the domain name); therefore, the argument of the claimant about the abuse of the right by the respondent is not accepted by the court. In addition, the plaintiff believed that the defendant had in fact created obstacles to him for registering a domain that reproduced the trademarks belonging to him, which did not allow the plaintiff to exercise legal rights to trademarks in the Russian segment of the Internet. But, as the court rightly pointed out, the plaintiff was not deprived of the opportunity to become the administrator of the domain name in the domain name “.”. According to the court, the plaintiff did not prove the fact that the defendant does not have any legal rights and interests with respect to the domain name and that he uses the domain name in bad faith.
Solution: the claim was refused.
Note: This trial has a long history . Above was given the decision of the court of first instance, the correctness of which was confirmed in higher instances.
5. Domain Name: trademark vs brand name
See below in the text the dispute regarding the domains of lad-m.ru and ladm.ru , since in that case the claimant indicated that the actions of the defendant violated his rights both to the company name and to trademarks. But the court refused to satisfy the claims of the claimant in the protection of trademark rights, since the domains were registered for the defendant before registering the rights of the claimant to the LAD-M and LADM trademarks and prior to the emergence of priority on them.
6. Domain Name: Trademark vs Commercial Designation
prontopizza.ru
Date of decision: 31.08.2012
Link to the solution: kad.arbitr.ru/PdfDocument/07ebb335-8999-4c72-b85a-6c7be6ee82ed/A43-15155-2012_20120831_Reshenie.pdf
The essence of the matter: The plaintiff is the copyright holder of the TK “PRONTO”, the defendant is the commercial designation of “Pronto PIZZA e PASTA” and the above-mentioned domain. Due to the fact that the visual image was widely used in the respondent’s business activities prior to the date of the claimant’s trademark priority (May 23, 2007), the claimant, as the trademark owner, has no right to prohibit the use of the controversial designation to a person who conscientiously applied it to individualize their enterprise before trademark. Moreover, the court stated the following: in spite of the fact that the trademark is registered, the actions of the claimant aimed at its registration, on the basis of the above
factual circumstances constitute an abuse of right.
Solution: to refuse the claim.
7. Domain Name: Brand Name vs Brand Name
lad-m.ru and ladm.ru
Date of decision: 08.12.2009
Link to the solution: www.arbitr.ru/bras.net/f.aspx?id_casedoc=1_1_00ce1c87-ae9b-4cf4-8999-54e43b3da84c
The essence of the case: the Applicant is the copyright holder of the TK “LAD-M” and “LADM” (certificates No 335306 and 337921).
The defendant administers the domain name “ladm.ru” from 04/20/2004, and the domain name “lad-m.ru” from 02.05.2006.
Decision: the decisions of the lower courts were canceled, the respondent’s actions on the domain name administration lad-m.ru and ladm.ru were found to be a violation of the rights of LAD-M CJSC to the company name, the respondent was forbidden to use these domain names.
8. I would also like to draw the following interesting aspects that have emerged in judicial practice:
8.1. The owner of the domain name offered to the trademark owner (or unlimited circle of persons) to purchase a domain name from him
svetaled.ru
Date of decision: 12.12.2012
Link to the solution: sudact.ru/arbitral/doc/U93q5pcgror1
The essence of the case: the Claimant is the copyright holder of the SvetaLED TK. The defendant is the owner of the above domain. 06/23/2011 he sent the plaintiff a commercial offer to purchase a domain name “svetaled.ru” for 3,000,000 rubles. The domain name used by the defendant is registered after it after the registration of the claimant’s TK. A website on the Internet with the domain name “svetaled.ru” is actually used by the respondent to post information about similar products for which the claimant’s TK is registered.
Solution: prohibiting the defendant from using the trademark “SvetaLED” or a designation similar to it to the point of confusion in the domain name “svetaled.ru”.
media.su
Date of decision: 10.03.2010
Link to the solution: docs.pravo.ru/document/view/4275864
The essence of the case: the Claimant is the copyright holder of the TK "Media Markt" and "Media Markt". On the website of mediamark.su, without the consent of the Claimant, its TK is used. In addition, this site contained an offer for the sale of a domain name, namely, information that the domain name of media-markt.su is being sold and the email addresses for communication are indicated. In addition, the site contained links to the websites of companies selling electrical household goods (thus, the domain name was used by the respondent in relation to goods similar to goods protected by the claimant’s TK).
Solution: the actions of the defendant on the registration and use of the domain name media.markt.su recognized abuse of the right. The defendant was forbidden to use the designation “Media Markt” in the domain names, as well as on the pages of the websites, for goods and services in respect of which the claimant’s TK was registered.
8.2. Subjects of proceedings in the Russian courts are domains not only in the zones RU / SU / RF
miraxanet.com - docs.pravo.ru/document/view/26318331 - compensation of 50 000 rubles
bolshoi.me - sudact.ru/arbitral/doc/KojocSu7ZVUp - compensation of 10,000 rubles
ombrello.me - sudact.ru/arbitral/doc/cXjBsGquwaVv - compensation of 60,000 rubles
mirax.me and mirax.tv - sudact.ru/arbitral/doc/3PKqocf5NnVx - compensation of 50 000 rubles
hansa-lex.info - docs.pravo.ru/document/view/3247747 - compensation of 50,000 rubles
guahoo.org - sudact.ru/arbitral/doc/THawIyCJHANm
sberbank.org and sberbank.biz - docs.pravo.ru/document/view/18513094 - 500,000 rubles
At the same time, in the case of the domain miraxanet.com, the defendant was a foreign citizen (citizen of Ukraine), but the case was considered in the ASGM, since the claimant has a Russian TOR “MIRAX”.
8.3. Successful plaintiffs (sued more than once, sued successfully)
a. SP Starostin V.A.
onegagipertonik.ru
Date of decision: 19.10.2011
Link to the solution: docs.pravo.ru/document/view/20353087
The essence of the case: The claims of this plaintiff are among the most interesting on this topic. The plaintiff is the owner of TOR "ONEGA". Initially, they filed a lawsuit about this domain name. , , , «onegagipertonik.ru», «» ( , ), , .
: «onegagipertonik.ru», 5 000 000 ( – !).
— onegamed.ru ( ), 5 , 500 000 .
b. «»
kamaz-nsk.ru ( http://sudact.ru/arbitral/doc/XCnvCMkdOsxr/ ), obves-kamaz.ru ( http://sudact.ru/arbitral/doc/BOtcQuAtTeYG/ ), kamaz-02.ru kamaz-444.narod.ru ( http://sudact.ru/arbitral/doc/LFBnjRk02nJT/ ), kmazcentrservis.ru ( http://sudact.ru/arbitral/doc/V77ymksFzQm1/ ).
with. «»
: «ufarabota.ru» rabota-ufa.ru, ufa.rabotavgorode.ru rabota-ufa.info.
, . «» ( koza-dereza.ru — sudact.ru/arbitral/doc/5stYAK5cXHNn , ko3a-dere3a.ru — docs.pravo.ru/document/view/28541154 ) ( miraxa.net.ru — docs.pravo.ru/document/view/20227310 , miraxanet.com — docs.pravo.ru/document/view/26318331 ). , .
8.4.
a. 100 000
alviz.ru — sudact.ru/arbitral/doc/mudTdG5lPKQ8 — 100 000
alviz.ru — docs.pravo.ru/document/view/26255994 — 100 000
uma.msk.ru – docs.pravo.ru/document/view/3630894 — 100 000
autolunch.ru — sudact.ru/arbitral/doc/RnZdY2uUk7on — 100 000
navitel.ru — sudact.ru/arbitral/doc/LhEWojkNpbJR — 100 000
terrinco.ru — docs.pravo.ru/document/view/21038285 — 100 000
. — docs.pravo.ru/document/view/26523717 — 100 000
shelestowo.ru — docs.pravo.ru/document/view/25716004 — 100 000
fujikura.su — docs.pravo.ru/document/view/10635174 — 100 000
lafei-nier.ru lafeinier.ru — docs.pravo.ru/document/view/10526771 — 100 000
louisvuittonstore.ru — sudact.ru/arbitral/doc/aOQ0y875dVlu — 100 000
mexx.ru — sudact.ru/arbitral/doc/jUHcyV7lH6Wg — 150 000
vefk.ru — sudact.ru/arbitral/doc/KDsbkHcQt4Vm — 190 000
icq.ru — sudact.ru/arbitral/doc/I0xJLd5YXxWj — 200 000
osnova.ru — docs.pravo.ru/document/view/3656563 — 225 000
renesa-market.ru — docs.pravo.ru/document/view/28727902 — 250 000
ak-verdikt.spb.ru — docs.pravo.ru/document/view/20930874 — 250 000
kamaz-02.ru kamaz-444.narod.ru — sudact.ru/arbitral/doc/LFBnjRk02nJT — 250 000
cesab.ru — docs.pravo.ru/document/view/1563457 — 500 000 ( 300 000 )
b. 500 000
mvidio.ru — docs.pravo.ru/document/view/32760387 — 500 000
kamaz-nsk.ru — sudact.ru/arbitral/doc/XCnvCMkdOsxr — 500 000
bacus2006.ru — docs.pravo.ru/document/view/29738860 — 500 000
onegamed.ru — sudact.ru/arbitral/doc/4jsxE2yxDO5K — 500 000
sberbank.org sberbank.biz — docs.pravo.ru/document/view/18513094 — 500 000
c. 1 000 000
severstalspb.ru — sudact.ru/arbitral/doc/zzHEGOIeksoe — 1 000 000
wegoma.ru wegomarus.ru — kad.arbitr.ru/PdfDocument/456b3790-cbe5-4338-8ac3-1b459e1a1c9d/A76-22148-2010_20120215_Reshenija%20i%20postanovlenija.pdf — 1 000 000
. — docs.pravo.ru/document/view/21969282 — 1 350 000
onegagipertonik.ru — docs.pravo.ru/document/view/20353087 — 5 000 000
8.5. ,
, , :
sexvideogid.ru — sudact.ru/arbitral/doc/UxH6xq3n7wxv — .
koza-dereza.ru — sudact.ru/arbitral/doc/5stYAK5cXHNn — – 75 000 .
. — sudact.ru/arbitral/doc/USIGzYrPXBYv — ( : – « », – « »).
, , , ( : headhuhter.ru , . ), , – – ( advocatekim.ru , . , , , , ).
- ? , .
PS Dura Lex .
Source: https://habr.com/ru/post/180235/
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