Russian Court Issues Unexpected Decision in Domain Name Case
Jan 31 2017 - 11:38
The Moscow Arbitration Court has recently dismissed an infringement action initiated by German lighting manufacturer OSRAM GmbH against the domain name ledvance.ru because the limitation period had expired.
Namely, the international trademark LEDVANCE was registered by OSRAM GmbH in April 2010, and granted in Russia in February 2011, while the disputed domain ledvance.ru was created on December 15, 2010. According to the judge, the claimant, OSRAM GmbH, was not only able but obliged to search the .ru country code top-level domain (ccTLD) directory and reveal the ledvance.ru domain between December 2010 and December 2013. The judge concluded that not filing the infringement action within that period means that OSRAM GmbH lost the right to seek protection in court.
This is an unusual decision for two main reasons. Firstly, it is exceptionally rare that the limitation period is considered in contentious IP disputes in Russia. Granted, the domain name was registered 6 years ago, but it still exists and infringes a trademark. The limitation period could be considered if the defendant could prove that OSRAM GmbH was aware of the domain name three years ago, for instance by providing proof that a notice was sent to OSRAM GmbH or by presenting a Cease and Desist letter sent to the defendant by OSRAM GmbH, but there is no mention of such evidence in the case summary available to the public.
Secondly, there is no official public domain name register in Russia which OSRAM GmbH could have searched in order to discover the ledvance.ru domain name.
The Appellate Court will reconsider this case on February 6, 2017, but the decision of the first instance will likely be upheld. The next instance is the Russian Intellectual Property Court, which may cancel the decisions of the lower courts and provide a legal explanation regarding the limitation periods in IP rights disputes.
If however this decision becomes final, it will change the entire practice. Most domain name owners would then be able to claim a limitation period, and this would imply that trademark owners should monitor domain names on a regular basis or register all possible versions of the domain name when filing their trademark applications.