Domain Name Conflict
After analyzing the errors of the first article , I came to the conclusion that the second article should have a maximum IT bias. I decided that one of the most interesting problems of intellectual property on the Internet would be “Domain name rights conflict”.
I am sure that all Habraludi know what a domain name is. But, in order to avoid the divergence of concepts, I will give the definition of a legal domain concept.
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A domain name is a unique alphabetic, numeric, symbolic designation or a combination of such designations that is registered in the domain name registry in accordance with the rules established by ICANN (Internet Name and Address Organization) and is intended to identify a specific information resource, device or group devices on the Internet.
The above definition well reflects the organizational side of the essence of the domain name. However, the other side should be the most interesting for us - the legal one.
Domain name rights arise on the basis of a civil contract for paid services, in accordance with which the end user of the domain name who submitted the application for registration is provided with a temporary, for the period of registration, the possibility of using the domain name at its discretion.
After the first cases of domain registration were identified by individuals who chose foreign identity means (trademarks, trade names, or their elements that already existed by that time), these actions were called “cybersquatting”), the question of the correlation rights to the domain name and the above-mentioned means of individualization, which, in accordance with Art. 138 of the Civil Code of the Russian Federation are recognized as objects of intellectual property.
The domain name is not a means of individualization, similar to the intellectual property, since the acquisition of this status, as follows from the same Art. 138 of the Civil Code, possibly in the manner prescribed by the Civil Code. So at the present time in Russia there are no laws that would recognize a domain name as an object of intellectual property and accordingly establish an exclusive right to it.
In 1999, at the very beginning of the upsurge in Russia of lawsuits on domain name rights, lawyers sympathizing with cybersquatters put forward the idea that the judges gratefully picked up on the alleged legislative gap and on the parallel existence of trademark and domain name rights, as a consequence of this omission: “The domain name is neither a product nor a service, and therefore it is not subject to the Trademark Law.”
Later, the Presidium of the Supreme Arbitration Court of the Russian Federation, in its Resolution No. 1192/00 of January 16, 2001, corrected the courts of lower instances, confirming that the controversial legal relations connected with the registration of domain names are subject to trademark law.
More than 4 dozens of decisions made by Russian arbitration courts and courts of general jurisdiction since then seemed to give definitive answers to questions about the legal status of a domain name and, in particular, about the relationship between the rights to a domain name and the means of individualization trademark.
However, judging by the publications in legal periodicals, the answers to these questions are not so straightforward. In particular, I. Nevzorov, based on the fact that “from the point of view of the Russian legislation , the domain name is a prop, designed to be identified in accordance with art. 2 of the Federal Law of February 20, 1995. “On information, informatization and protection of information” recorded on a tangible medium ”, concludes: “ ... being a requisite of documented information, a domain name identifies certain information posted on the Internet, and not some other goods. Here's why that a domain name is similar to a trademark on some thing would be incorrect. A trademark identifies a product, and a domain name identifies information on the Internet. Consequently, the use of a domain name similar to a trademark does not constitute a violation of the rights of the holder of such a mark, since the use of a similar designation for identification of goods for which the trademark is registered, but not information on the Internet, can be recognized as a violation. ”
When considering the first domain disputes, it is clear that everyone stepped on the same rake as the courts. The mistake is to ignore an important element of the definition of violation of rights to a trademark, given in paragraph 2 of Art. 4 of the Law of the Russian Federation of September 23, 1992 No. 3520-I “On Trademarks, Service Marks and Appellations of Origin”, which says:
“Violation of the exclusive right of the right holder shall be deemed to use a trademark on the territory of Russia without its permission in the territory of Rossi or similar to it to the extent of shifting the designation in relation to goods for which the mark is individualized, or similar goods, including the placement of a trademark or similar to the extent of shifting the designation ... on the Internet, in particular in the domain name and with other ways of addressing. "
The preposition "in relation" means "in connection with" and does not imply only a narrow understanding of "on the product itself" or "on the packaging of the goods", but includes other forms and methods of use "in connection with the goods". At the same time, from the definition it is obvious that in order to recognize the fact of a violation, both conditions — on the use of the trademark “in the domain name” and “in relation to the goods” - must be fulfilled simultaneously.
I. Nevzorov still allows an exception, which, however, is also erroneous: the recognition of a violation of the right to a trademark is possible only "in the case when the trademark of the right holder is registered to sell and provide information."
If you follow this logic, only the rights of the owners of Internet resources, whose business is to disseminate information on a commercial basis, are subject to protection.
Thus, to recognize a violation of the rights of the owners of a trademark, it is sufficient to have the fact that a trademark is unauthorized to use a trademark or a similar designation to the extent of offset in the domain name of the resource that hosts information about a product that is homogeneous to which the trademark registered.
On the basis of art. 4, item 2 of the “Law on Trademarks” will not be recognized as a violation of the rights of the owner of a trademark to act on the registration of a domain name, if the domain name is not used for goods that are similar to those for which the trademark has been individualized. For example, a domain name is registered, but is not used for addressing on an Internet resource, or on an Internet resource information is provided about goods not covered by the certificate of registration of a trademark.
This material does not fully disclose the problem of rights to domain names, so in the next article I would like to talk about the relationship between the rights to a domain name and a company name.
Let's get started
I am sure that all Habraludi know what a domain name is. But, in order to avoid the divergence of concepts, I will give the definition of a legal domain concept.
')
A domain name is a unique alphabetic, numeric, symbolic designation or a combination of such designations that is registered in the domain name registry in accordance with the rules established by ICANN (Internet Name and Address Organization) and is intended to identify a specific information resource, device or group devices on the Internet.
The above definition well reflects the organizational side of the essence of the domain name. However, the other side should be the most interesting for us - the legal one.
Domain name rights arise on the basis of a civil contract for paid services, in accordance with which the end user of the domain name who submitted the application for registration is provided with a temporary, for the period of registration, the possibility of using the domain name at its discretion.
After the first cases of domain registration were identified by individuals who chose foreign identity means (trademarks, trade names, or their elements that already existed by that time), these actions were called “cybersquatting”), the question of the correlation rights to the domain name and the above-mentioned means of individualization, which, in accordance with Art. 138 of the Civil Code of the Russian Federation are recognized as objects of intellectual property.
The domain name is not a means of individualization, similar to the intellectual property, since the acquisition of this status, as follows from the same Art. 138 of the Civil Code, possibly in the manner prescribed by the Civil Code. So at the present time in Russia there are no laws that would recognize a domain name as an object of intellectual property and accordingly establish an exclusive right to it.
How does the right to domain name correlate with the rights to intellectual property?
In 1999, at the very beginning of the upsurge in Russia of lawsuits on domain name rights, lawyers sympathizing with cybersquatters put forward the idea that the judges gratefully picked up on the alleged legislative gap and on the parallel existence of trademark and domain name rights, as a consequence of this omission: “The domain name is neither a product nor a service, and therefore it is not subject to the Trademark Law.”
Later, the Presidium of the Supreme Arbitration Court of the Russian Federation, in its Resolution No. 1192/00 of January 16, 2001, corrected the courts of lower instances, confirming that the controversial legal relations connected with the registration of domain names are subject to trademark law.
More than 4 dozens of decisions made by Russian arbitration courts and courts of general jurisdiction since then seemed to give definitive answers to questions about the legal status of a domain name and, in particular, about the relationship between the rights to a domain name and the means of individualization trademark.
However, judging by the publications in legal periodicals, the answers to these questions are not so straightforward. In particular, I. Nevzorov, based on the fact that “from the point of view of the Russian legislation , the domain name is a prop, designed to be identified in accordance with art. 2 of the Federal Law of February 20, 1995. “On information, informatization and protection of information” recorded on a tangible medium ”, concludes: “ ... being a requisite of documented information, a domain name identifies certain information posted on the Internet, and not some other goods. Here's why that a domain name is similar to a trademark on some thing would be incorrect. A trademark identifies a product, and a domain name identifies information on the Internet. Consequently, the use of a domain name similar to a trademark does not constitute a violation of the rights of the holder of such a mark, since the use of a similar designation for identification of goods for which the trademark is registered, but not information on the Internet, can be recognized as a violation. ”
When considering the first domain disputes, it is clear that everyone stepped on the same rake as the courts. The mistake is to ignore an important element of the definition of violation of rights to a trademark, given in paragraph 2 of Art. 4 of the Law of the Russian Federation of September 23, 1992 No. 3520-I “On Trademarks, Service Marks and Appellations of Origin”, which says:
“Violation of the exclusive right of the right holder shall be deemed to use a trademark on the territory of Russia without its permission in the territory of Rossi or similar to it to the extent of shifting the designation in relation to goods for which the mark is individualized, or similar goods, including the placement of a trademark or similar to the extent of shifting the designation ... on the Internet, in particular in the domain name and with other ways of addressing. "
The preposition "in relation" means "in connection with" and does not imply only a narrow understanding of "on the product itself" or "on the packaging of the goods", but includes other forms and methods of use "in connection with the goods". At the same time, from the definition it is obvious that in order to recognize the fact of a violation, both conditions — on the use of the trademark “in the domain name” and “in relation to the goods” - must be fulfilled simultaneously.
I. Nevzorov still allows an exception, which, however, is also erroneous: the recognition of a violation of the right to a trademark is possible only "in the case when the trademark of the right holder is registered to sell and provide information."
If you follow this logic, only the rights of the owners of Internet resources, whose business is to disseminate information on a commercial basis, are subject to protection.
Thus, to recognize a violation of the rights of the owners of a trademark, it is sufficient to have the fact that a trademark is unauthorized to use a trademark or a similar designation to the extent of offset in the domain name of the resource that hosts information about a product that is homogeneous to which the trademark registered.
On the basis of art. 4, item 2 of the “Law on Trademarks” will not be recognized as a violation of the rights of the owner of a trademark to act on the registration of a domain name, if the domain name is not used for goods that are similar to those for which the trademark has been individualized. For example, a domain name is registered, but is not used for addressing on an Internet resource, or on an Internet resource information is provided about goods not covered by the certificate of registration of a trademark.
In the next article.
This material does not fully disclose the problem of rights to domain names, so in the next article I would like to talk about the relationship between the rights to a domain name and a company name.
Source: https://habr.com/ru/post/38819/
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