Higher Arbitrazh Court, Decision of 18 May 2011, No. 18012/10, G.H. Mumm & Cie v. Yusupov
The Higher Arbitrazh Court of Russia reveals a new approach in domain name litigation, making this more favorable for trademark owners.
In the absence of administrative or quasi-trial procedures for domain name disputes in Russia, similar to UDRP, the Russian Arbitrazh (Commercial) courts remain the sole practical tool to resolve the domain name disputes in the .ru zone if parties do not wish or are not able to come to an amicable solution. This shows the important role of the Higher Arbitrazh Court in domain name recuperation cases.
Traditionally, Russian courts only supported claims of trademark owners against cyber squatters if the content of the website related to the domain name was used for offering for sale goods and/or services identical or confusingly similar to those covered by the relevant trademark registrations. This approach produced a detrimental effect upon potential domain name recuperation claims of numerous trademark owners for more than a decade in Russia, since in many cases cyber squatters used the domain names for other goods and services or refrained from using the domain names at all. This practice was also supported by the domain name registrars, mostly due to the predictability of the domain name disputes. However, this court practice is now subject to change and it is further developing. The approach of the courts has become more favorable towards trademark owners in general, and in domain name disputes in particular. The Arbitrazh courts tend to pay more attention to the possibly unfair character of the registration and administration of Domain names.
This new approach was shown in the G.H. Mumm & Cie v. Yusupov case, heard by the Higher Arbitrazh Court of Russia in May 2011 and relating to the domain name mumm.ru.
G.H. Mumm & Cie (Mumm) is the owner of the International trademark registration “MUMM” covering Russia and registered in 1986 for goods in classes 32 and 33, inter alia for wines and champagnes. Mr. Yusupov, a Russian individual, owned the domain name mumm.ru but did not use it for any commercial activities.
In June 2010, the Moscow Arbitrazh Court dismissed Mumm’s claims on the grounds of non-use of the domain name for commercial activities, indicating that there was no trademark infringement in this case. The judgment was supported by the domain name registrar who was involved in the case as a third party. However, in September 2010, the appellate court reversed the judgment, emphasizing the exclusiveness of the rights of the trademark owner to use the trademarks in domain names and the legitimate interest of the domain name owner in the domain name. The court also pointed out that the registration and administration of the domain name by Mr. Yusupov created a threat of trademark infringement. In December 2010, this ruling was reversed by the cassation instance.
Finally, in May 2011, the Higher Arbitrazh Court of Russia held that the activities of Mr. Yusupov qualified as unfair competition practice and also infringed the exclusive rights of Mumm as trademark owner.
Although the Russian legal system is not a case law system, this ruling of the Higher Arbitrazh Court of Russia is very important for domain name recuperation disputes in Russia.
Anton Bankovsky
Hogan Lovells