Russian Federation: Domain Name Disputes In Russia

Last Updated: 3 October 2016
Article by Sergey V. Medvedev

Most Read Contributor in Russian Federation, September 2018

For its 11th edition, on 1 and 2 December 2016, Premier Cercle" will gather 100+ IP high-level speakers and 400+ delegates from corporate, private, institutional and academic worlds at the Intellectual Property Summit. This event will take place in Brussels at the World Customs Organization. This two-days conference aims at discussing trademark, patent, trade secrets, copyright and design major recent evolutions, actions, issues and ongoing EU Reforms. SafeBrands is a partner of IP Summit and will welcome you on its booth during the event.

Sir Sergey Medvedev as Russian Trademark and Design Attorney and representative of the Gorodissky law-firm in the frame of the IP Summit 2016, has the pleasure to introduce the 'Trademarks vs. Domain names' workshop which will be discussed by his colleague, Mr Ilya Goryachev, as well as with Mr Matthieu Aubert, Legal manager of SafeBrands. We warmly thank him for this valuable contribution about the domain names dispute resolutions in Russia.

In Russia, domain name disputes are currently on the rise at trial. Unfair competitors, former distributors and speculating cyber-squatters are appropriating and using various attractive types of domain names resembling (copying) famous brands, trademarks and trade names which are usually protected as intellectual property (IP) rights in Russia. Unauthorized use of the protected IP rights, whether committed in the domain name or other mode of Internet-addressing, as well as unfair competition, are generally prohibited and therefore may be enforced in Russia in conformity with the national/international rules of law and recognized principles of local practice. Essentially, not only the Russian courts are empowered to handle regular unfair competition cases and/or IP infringement situations, but they may enjoin various threats (risks) of violation of exclusive rights of IP owners.

From the procedural point of view, domain conflicts involving such digital spaces as .RU, .SU and .РФ fall under the jurisdiction of the Russian courts, unless settled out-of-court under a letter of claim or cease-and-desist notice. Uniform Domain Name Dispute Resolution Policy (UDRP) is not applicable to the above-mentioned domain zones; as a result – such disputes may not be resolved under the UDRP procedures in the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center or any other arbitration forum.

At the same time, Russian judicial system does support the basic UDRP principles and vote for application of the three-factor-violation test through the implementation of Article 10bis of the Paris Convention for the Protection of Industrial Property. In other words, in a clear-cut domain name infringement matter, for example, the trademark owner would have to prove that:

  • the domain name is identical or confusingly similar to a trademark in which the claimant has rights;
  • the respondent has no rights or legitimate interests in respect of the domain name; and
  • the respondent's domain name has been registered and is being used in bad faith.

Importantly, in a classic domain name dispute, the trademark owner must prove the following three fundamental factors:

  • the priority of the trademark over the domain name.
  • the similarity between the trademark and the domain name; and
  • the similarity of the trademarked (registered) goods with the goods offered for sale (sold) on the web-site under the domain name.

Hence, if one of these factors is not demonstrated under the first or the second scenario as described above, the unfair behavior/IP infringement will not be established by the court. And, in asserting the unfair competition and/or IP infringement claim, the plaintiff (IP owner) must always act in good faith to avoid unfair hijacking of the conflicting domain name.

In terms of the relief, there are quite a few of legal remedies available under the Russian law to repress the unfair behavior and/or IP infringement arising out of or in connection with the domain name issue. Preliminary as well as permanent injunctions would be the most appropriate remedies-at-law according to the local practice. Monetary compensation (i.e. statutory damages) is fairly trendy too, while the publication of court order will not be quite a demanded award by the way.

With regard to the pre-trial action, it is necessary to serve a letter of claim or cease-and-desist notice to the domain name owner requesting the latter: (a) to cease IP infringement and/or unfair competition in the out-of-court manner, and/or (b) to proceed with a voluntary transfer the conflicting domain name. In the absence of the domain name owner's reply within the statutory period (i.e. 30 days), or in the event of his/her negative response, the claimant has a valid cause of action and is free to file a lawsuit with the competent court. The domain name's offer to sell the domain name, if obtained in return to the letter of claims or cease-and-desist notice, may be regarded as a solid evidence of his/her bad faith during the trial.

Essentially, prior to moving forward with the cease-and-desist notices and litigation claims, it is possible to turn to the respective domain registrars by asking them to disclose the details on the domain name registrants. Usually, the local domain registrars are ready to provide such information under the attorneys' written promises to use the same for the purposes of IP enforcement. Therefore, domain name registrations made in the names of 'private persons' would not save the situation and/or defend the domain name owners against possible unfair competition and/or IP infringement claims.


In general, bona fide IP owners, whether foreign or domestic, are well protected against pirate domain name registrations/use in Russia. National courts tend to explore any and all facts patterns related to domain name infringement matters and administer justice fully in line with the developed concepts of international law/practice. Hence, Russia may be a jurisdiction to consider...

Originally published by SafeBrands.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions