Expertise/Intellectual Property

Service

Domain Name Disputes

A dispute over who is entitled to administer a domain and use a name or brand in it is conducted through negotiations, in court or under the UDRP procedure where it applies to the domain zone.

We are most often instructed by:

  • Companies whose designation is used in a third party's domain
  • Companies whose domain is registered in the name of a contractor, employee or partner
  • Domain administrators (registrants) facing claims

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
Rights to a domain

In a domain dispute, what matters is not only the domain name itself and the date of its registration. The parties' rights to the designation, the nature of the domain's use, the website content, the arrangements between those involved and the rules of the relevant domain zone must also be taken into account.

Registering a domain name does not in itself create an exclusive right to the designation it contains. At the same time, a company's ownership of a trademark or other protected designation does not give it an unconditional right to obtain a matching domain.

The grounds for claims concerning a domain are rights to a trademark, company name or commercial designation, contractual obligations and the rules on unfair competition.

Before the other party is contacted, it may be necessary to record the website content and other evidence. The possibility of temporarily restricting certain actions with the domain is also assessed. Such restrictions are applied where there are grounds for them and in accordance with the established procedure.

02 / Outcome
Service Outcome
  • Opinion on prospectsA written analysis of the documents, the grounds for the claims and the risks, with settlement options.
  • Settlement materialsLetters of claim, replies and draft domain transfer agreements.
  • Procedural documentsRequests to the registrar, motions, statements of claim, responses and documents for the UDRP procedure.
  • Participation in proceedingsRepresentation in negotiations, before the registrar and at court hearings.
  • Enforcement materialsRequests to the registrar and documents for action on the basis of a court ruling or agreement.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the position is built on

  1. Materials

    The position is built on the documents and the circumstances of the case; the following points are relevant.

    • Domain and designationThe disputed address and the name used by the company.
    • Documents on rightsInformation on the trademark and other documents relating to the designation.
    • History of useCorrespondence, offers to transfer the domain, saved pages of the website and other available materials.
    • Relationship between the partiesContracts, instructions and payment documents, if the domain was registered through a contractor, employee or partner.
    • Claims receivedA letter of claim, a notice from the registrar, a statement of claim or other documents in the dispute.
    • Purpose of the requestThe result the company would like to achieve.

  2. Assessment

    On the basis of the materials, the strengths and weaknesses of the position, the risks and the possible courses of action are identified.

  3. Plan

    For the chosen option, a plan is drawn up: the sequence of steps, timing and scope of work.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

The outcome depends on the company's rights to the designation, the circumstances in which the domain is used and the rules of the domain zone; these are assessed before going to court. Once a court ruling has been issued, support is provided with the steps required at the registrar to enforce it.

The offer and the correspondence are preserved, after which the terms of the proposed deal and possible alternatives are assessed. An offer to sell does not in itself support a conclusion that there has been an infringement. If the parties are prepared to reach agreement, the payment arrangements and the transfer of the right to administer the domain are set out in an agreement.

Yes. In that case, other possible grounds for claims, the company's documents and the circumstances in which the designation is used are examined. Without a trademark the range of grounds is narrower, but a settlement remains possible.

First, the information on the domain administrator and the contracts, instructions and correspondence concerning the registration and use of the domain are examined. Once the documents have been analysed, the prospects for negotiations and the grounds for other action are assessed.

The procedure depends on the domain zone and the nature of the claims. For .com and a number of other zones, the UDRP procedure is available and applies under certain conditions. This procedure is not used for the .ru and .рф zones. The appropriate route is determined after the situation has been examined.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Anna Tarlakovskaya Anna Tarlakovskaya Partner Andrey Nemov Andrey Nemov Partner

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Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Madrid System Trade Secrets and Know-How Inventions Utility Models Industrial Designs Documents and Consultations

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