Perhaps we are too used to the fact that disputes with the domain name administrator are easily resolved on the basis of prior rights. Of course, the domain name is not an object of intellectual property – instead of trademarks. Therefore, its use – including by a potential infringer – must comply with applicable regulations which include, among others, protection in relation to a certain list of goods and services.
A recent dispute has confirmed this assertion (Judgment of the Court of Intellectual Rights of May 24, 2022, № C01-461/2022 in case number A40-34013/2021). The plaintiff claimed that the defendant’s use of the domain name https://loba.ru/ infringed their international registrations No. 450791, No. 1221094 and No. 921131, registered for goods and services of classes 01, 02 , 03, 05. , 17, 19, 21 and 28 and contained the word element “LOBA”.
The dispute reached the Court of Intellectual Rights which confirmed the previous decisions: there was no violation. And the question is precisely the list of goods and services for which the applicant’s marks are registered. As can be seen, Plaintiff’s marks are registered for products related to repair work, and Defendant’s website does not only offer these products. Therefore, the sign is not actually used by him for goods in classes 01, 02, 03, 05, 17, 19, 21 and 28, and therefore there is no infringement.
Another point noted by the court – was the coincidence of the domain name with the first part of the defendant’s name (Lobashov AA), which, as has long been established by practice in resolving such disputes (see, for example , WIPO Arbitration and Mediation Center decision D2001-0537 in Armani and Anand R. Mani), permits such registration to be made in good faith.