Internet & Domain Name Issues. Practical Experience

In December 1998 after it has become known that www.kodak.ru domain name is owned by an entrepreneur dealing in photo goods and photo services and RosNIIROS, a registrar of domain names in Russian segment of internet refused to give the domain name to Kodak the company has filed a complaint with the Russian Antitrust Ministry on the grounds of violation of the Law on Advertisement and the Law on Competition.

According to its decision delivered finally in May 1999 the Antitrust Ministry has not found any violation of advertisement legislation. The Ministry cited in its decision the definition of the term “an advertisement”  given in the Russian Law on Advertisement: an information on some physical or legal entity and its goods and services spread in any form to unlimited number of people and supposed to form or maintain an attention to the entity, its goods or services and to facilitate the promotion of those goods therefore in the Ministry’s opinion domain name could not be regarded as an advertisement since its main purpose is to demarcate virtual space occupied by the web site and not to attract an attention. In its decision the Ministry left wholly unanswered the issue whether the actions by the cybersquatter could be considered as an unfair competition practice as it was alleged in the very same complaint by Kodak.

In June 1999 Kodak has filed a suit with trademark infringement claims against the cybersquatter and RosNIIROS as a third party and received three negative decisions. The judges of the first level court, the appeal court and the Federal Appeal Court exposed absolute lack of knowledge and understanding of basics of intellectual property issues, nature of internet and lack of skills to analyze, interpret and apply the current legislation which regulates intellectual property issues – the judges switched back and forth from trademarks to advertisement issues, found 2 identical expert opinions to be contradicting, applied specific article from Trademarks Law while ruling that the Trademarks Law is not applicable to the dispute since domain names are not either goods of services. Only in the objection signed by the Deputy Chairman of the Supreme Court in May 2000 for the first time it was said that domain names became the identification of the entity and its goods and services and have their commercial value. The case is going to be reviewed by the Supreme Arbitration Court on June 20.

In November 1999 Kodak has filed a suit on company name infringement against RosNIIROS as a defendant and the cybersquatter as a third party. It was done in line with the case ¹ À40-22492/99-15-232 where Mosfilm, Russian film studio sued an individual who had registered the domain name mosfilm.ru with RosNIIROS. On July 6, 1999 the very same judge who tried kodak.ru case on trademarks grounds has ruled in favor of Mosfilm enjoining RosNIIROS from allowing the domain name registration. Other judge who tried Kodak’s company name infringement claim found that because abbreviation “OOO” standing for limited liability company was not used next to “kodak”, there is no infringement. That decision was sustained by the appeal court but cancelled by the Federal Appeal Court and the case was returned to Moscow Arbitration Court for a new hearing. The Moscow Arbitration Court failed to follow the instructions given in the decision of Federal Appeal Court: to research an issue of consumers delusion, purposes why the name was chosen and to find out who is the infringer and again delivered the decision in favor of the defendant. The case is to be tried by the appeal division of Moscow Arbitration Court on June 19.

In March 2000 Kodak filed a complaint with Moscow Territorial Division of Antitrust Ministry with claims on unfair competition grounds.  Upon a month spent for a “review” the Division sent the complaint to the Ministry for making a decision. Preliminary opinion expressed by the Ministry official is that there is no unfair competition in cybersquatting. Kodak is waiting for a written decision of the Ministry to appeal it in the arbitration court.

As a result of this 1,5 years experience of attempts to fight back Kodak name I have a strong feeling that current Russian legal system is too underdeveloped to react in time on fast changing reality and not mentally ready yet to understand and to protect such a value as an intellectual property especially if it belongs to foreign company. The situation is improving very, very slowly and significant progress is not possible without active efforts of intellectual property owners initiating massive judicial practice.

Yuri Vatskovskiy,
Master of Comparative and
International Laws (L.L.M.)