Domain name disputes

What is happening

A company has registered its trademark and finds that the matching .ru domain is held by someone who runs no website there but offers to sell the domain for a large sum.

The company website has run for years on a domain that a marketer or a web studio once registered in its own name. The employee has left or the relationship with the contractor has soured, yet they are still listed as the domain administrator.

A competitor uses a domain one letter away from yours, copies your site design and diverts customers looking for you. Here the domain dispute overlaps with unfair competition.

What the law says

• Domains in the .ru and .рф zones are registered under rules approved by the Coordination Center for the national domains. The administrator is whoever is named in the register, and claims are brought against that person.
• Using a designation similar to someone else's trademark in a domain name without the owner's consent infringes the exclusive right under the Civil Code. Depending on the parties' status, the dispute goes to the commercial court or to a court of general jurisdiction.
• The usual claims are for a ban on using the designation in the domain and for compensation. Pending the dispute, the court may, on the claimant's application, prohibit a change of administrator or abandonment of the domain, so that it does not pass to a third party.
• Registering and using a domain to trade on someone else's reputation may be held to be unfair competition under Federal Law No. 135-FZ of 26 July 2006 "On the Protection of Competition", bringing in the competition authority.
• For international zones such as .com there is the out-of-court UDRP procedure: complaints are decided by accredited providers, including the WIPO Center, under uniform rules.
• Where a domain is registered to an employee or contractor, the claim rests on the employment or service contract and on the facts: who paid for registration, who used the domain and in whose interest it was created.

What we do

• We establish who the administrator is, when and through which registrar the domain was registered, how it is used and what rights the company has.
• We record the site content and the domain's history: notarised inspection, archived copies of pages, registrar data.
• We prepare a claim letter to the administrator and negotiate a voluntary transfer.
• We apply to court for interim measures so the domain is not transferred or deleted during the dispute.
• We file the claim and represent the company in court, and for international zones prepare a UDRP complaint.
• We help move domains held by employees and contractors into the company's name and put rules in place for keeping track of them.

What we will need from you

• The disputed domain and everything known about it: administrator, registrar, history of use.
• The trademark certificate, a state register extract showing the company name, and evidence of use of the brand.
• Correspondence with the domain administrator and any offers to sell.
• For domains held by employees and contractors: contracts, invoices and payments for registration and renewal, and correspondence about the website.
• Information on the impact: customer complaints, diverted orders, loss of traffic.