REVERA’s lawyers helped the Client defend their domain name
- FACTUAL BACKGROUND
- WHAT IS THE NATURE OF SUCH DISPUTES?
- ACTIONS TAKEN AND CASE OUTCOME
- Contact a lawyer for further information
REVERA’s lawyers successfully represented the interests of the Russian subsidiary of a major Chinese household-appliance manufacturer in a dispute over the transfer of a domain name in the national “.BY” zone. Owing to a well-designed pre-trial settlement strategy, all of the Client’s demands—including the transfer of rights to administer the domain name—were fully satisfied. As a result, the Client was able to save both time and litigation costs in resolving the dispute.
For more details about the circumstances of the case, see the materials prepared by REVERA’s lawyers.
FACTUAL BACKGROUND
The Client is the Russian subsidiary of a major Chinese household-appliance manufacturer that owns a trade mark protected on the basis of an international registration. Under an exclusive licence agreement, the Client is granted the right to use the trade mark in the territory of the Russian Federation and the Republic of Belarus.
During internet monitoring, the Client discovered that, without its consent, a third party was using in the territory of the Republic of Belarus a domain name containing the trade mark, the exclusive right to use which belongs to the Client.
Before contacting REVERA, the Client made several independent attempts to resolve the dispute out of court; however, these efforts were unsuccessful.
WHAT IS THE NATURE OF SUCH DISPUTES?
As a general rule, an exclusive licence means that the licensee has, in effect, the same rights in respect of the trade mark as the proprietor, within a specified territory and for a specified period (including the right to protection), with the exception of the right of disposal.
In other words, under an exclusive licence a licensee has the right not only to use the trade mark independently but also to prohibit third parties from using that trade mark and, if necessary, to seek cessation of the infringement through the courts and law-enforcement authorities. In effect, this means that the licensee enjoys a right of protection on a par with the proprietor.
In the dispute at hand, the Client, as licensee, discovered that the trade mark of the parent Chinese company—rights to use which had been granted to the Client under an exclusive licence in the territory of Belarus—was being used without the Client’s consent by one of the distributors in Belarus as a domain name in the national .BY zone and on the website to which it resolves.
It should be noted that court practice proceeds from the position that the very fact of a third party registering a domain name in the .BY zone that includes a trade mark, the exclusive rights to which belong to the Client in Belarus, itself constitutes an infringement of exclusive trade mark rights.
When resolving such cases in Belarus, as in many countries worldwide, a mandatory pre-trial (pre-action) dispute-resolution procedure applies. Before filing a claim with the court, the party whose rights have been infringed must take steps to settle the conflict without involving the court, in particular by sending a written pre-trial demand to the potential infringer.
Court practice in the Republic of Belarus in cases concerning the transfer or deprivation of rights to a domain name follows the classic subject of proof in cases of infringement of exclusive trade mark rights:
- confusing similarity of the designation used in the domain name;
- use of the designation in relation to similar goods, works or services.
Before commencing court proceedings, it is also important to prepare all necessary evidence, including notarial certification of electronic evidence, requests for extracts from the World Intellectual Property Organization (WIPO), and other supporting materials.
ACTIONS TAKEN AND CASE OUTCOME
On the Client’s instructions, REVERA’s lawyers prepared and sent a series of demands to the domain owner and also prepared a statement of claim for possible filing with the court.
As a result of these actions, the domain owner ultimately expressed willingness to resolve the situation amicably out of court. REVERA’s lawyers conducted negotiations, following which a complete set of documents was prepared to resolve the disputed situation on all claims, including registration of the transfer of rights to administer the disputed domain name.
Ultimately, the situation was successfully resolved without recourse to the courts: the previous domain-name owner voluntarily transferred the rights to administer it, which enabled the Client to protect its rights without litigation expenses and additional loss of time.
If, in the course of your activities, you encounter unlawful use of a trade mark, including in a domain name, REVERA’s lawyers will be pleased to provide comprehensive legal support in such cases. You can submit a request directly on our website or write to info@revera.legal
Authors: Pavel Klementsov, Aliaksei Fedarovich.
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