Exclusive rights on the commercial name and trade mark are protected according to the current legislation. As a part of the exclusive rights is right to use of the domain name identical to the trade mark or another brand identity of the company, products or services.
The violated rights may be protected in 2 ways by non-judicial (pre-court) procedure or via legal lawsuit procedure.
Well known Finnish shoes brand KUOMA was suffered from the swindlers who were selling counterfeit goods using a fake web site with domain names similar to the brand. TEAM lawyers implemented the following actions which may be used as an action plan for similar cases:
- First of all, you should go to the notary officer, who verifies the picture authenticity on the website. Using internet records you should compare the domain creation date with the register date of the trade mark. Now therefore, we can officially confirm the act of violation of exclusive rights;
- Secondly, the claim about illegal company name usage and trade mark (KUOMA in our case) was sent to the special administration “K” of Russian Police. This claim helped to start a search upon the fraud on the web sites;
- Thirdly, to block site, who violates the exclusive rights of the owner we sent an attorney’s request to the hosting service of the web site with counterfeit goods. This request is an application to the registrar, notifying on law violation by domain owners, requiring to release information about owners and to block web site.
At the same time, same information was published on the main web sites in customer right protection (http://forum.ozpp.ru/) to secure people from buying defective merchandise.
As a result of taken actions all five web sites, violating rights of our client and frauding customers were blocked.
It should be mentioned that there is one more way of protection technique of the infringed right. The judicial way probably offers the better protection and loss compensation, but also requires corresponding spent in time and money.
Company has to file a lawsuit with the claim for provisional measures appliance, particularly blocking the web site. The claim is addressed to the Intellectual Property Rights Court in Moscow.
Federal Service for Supervision of Communications, Information Technology, and Mass Media (Roscomnadzor) is an executive authority, who engages in blocking web sites, that contains information, violating immaterial rights.
It is possible to expect not loss refund in the amount defined by the court according to the case’s particular circumstances, like the character of violation, period of illegal usage, prospective loss. It is also possible to arrange injunction on the use and termination of rights on the domain itself. It is all can work only if the court admits the fact of information contempt, which contains on the web site, forbidden to publication and contemptuous regulation of Russian Federation.
Summarizing we can say that both ways of action shall be combined in order to defend the exclusive rights and stop the illegal usage of the intellectual property in web as well as to get proper compensation of losses.