Successful Representation of the Client in the Dispute over Illegal Use of the Trade Mark
Client VERIZON Trademark Services LLC (USA)
Description
Client VERIZON Trademark Services (USA) is the right holder of the exclusive rights to the trade name and the trademarks incorporating the key verbal designation VERIZON well known to consumers worldwide.
The client has become aware of the illegal use of the designation VERIZON in the domain name verizonmedia.ru.
Solution
Within this case, the firm’s lawyers have proposed the most effective strategies for pre-trial and legal representation. In particular, several claim letters have been sent requesting that the infringer stop the illegal use of the client’s trademarks and trade name as well as transfer the rights to administer the domain under dispute. The domain’s administrator has refused to settle the dispute by negotiations.
Having exhausted the possibility to settle it by negotiations, the client has filed a claim with the Commercial Court of Moscow for protection of its exclusive rights to the trademarks and the trade name. Prior to this, all required actions have been taken to prevent any transfer of the domain name to any third parties during the legal proceeding.
Result
During the consideration of court case No. А40-320389/2019 by the Commercial Court of Moscow, the lawyers of Law Firm Gorodissky & Partners have been able to prove the following facts:
(1) The domain name under dispute is confusingly similar to the client’s trademarks; there is a stable association between them, which results in their confusion in the consumer’s (Internet user’s) mind;
(2) The domain name verizonmedia.ru and the trademarks/trade name may be perceived as varieties of the same designation used by the same business entity (the right holder), which is not true to the facts;
(3) The defendant has no legal rights and interests with regard to the domain name verizonmedia.ru;
(4) The defendant unfairly uses the domain name verizonmedia.ru by supporting its registration.
As a result, the court has satisfied the claims in full and the rights to administer the domain under dispute have been transferred to the client.
