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GORODISSKY & PARTNERS
INTELLECTUAL PROPERTY
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Successful Representation of the Client in the Domain Name Dispute for the Amount of 1,000,000 Rub

Client RUSHEAT, LLC (Russia)

Description

RUSHEAT, LLC (the Client) is the largest Russian distributor of heating and ventilation equipment. Among other things, the Client is reselling the SONNIGER equipment (the goods of a well-known Polish manufacturer), which are lawfully commercialized in Russia. In Russia, these goods are sold and advertised through the Internet, in particular. The Client’s competitor has unfairly registered sonninger.ru domain name in its name adding the extra “n” and specifying the Client’s contact details on the website. Having considered the said domain name as confusingly similar to the SONNIGER trademark and capable of misleading consumers on the market, the Russian franchisee of the Polish brand has filed a letter of claim and subsequently a lawsuit against the Client for illegal use of the SONNIGER trade mark in the domain name. At the same time, the rights holder of the SONNIGER trade mark has not been involved in the court process and might have been unaware of this non-typical situation. The owner of the SONNIGER trade mark is SONNIGER Polska Sp. z o.o., a company registered in Poland.

At this stage, the Client has contacted us as specialists in resolving domain name disputes in order to defend (assert) its rights and legitimate interests.

Solution

In this case, we have consulted the Client on all substantive and procedural issues of defending (asserting) its rights in court, having proposed the Client the most effective judicial strategy. In particular, we have advised the Client to file a statement of defence against the lawsuit for non-infringement of the claimant’s rights as well as of the exclusive rights of the rights holder of the SONNIGER trade mark, whereupon we have recommended the Client filing a statement of claim for reimbursement for court fees.

In the course of the dispute, the Client has been defending its position, in particular, referring to the following facts (1) the lawsuit has been filed by the non-proper claimant (the franchisee is not entitled to defend exclusive rights by virtue of law), (2) the lawsuit has been lodged against the non-proper defendant (the Client is not the owner of the litigious domain name and, therefore, cannot be responsible for use of the trade mark in the domain name pursuant to the National Coordination Centre’s Rules for RU/РФ Domains), (3) filing a lawsuit is an abuse of rights, since the lawsuit is, in fact, fictitious per se and is not actually aimed at defending the exclusive rights to the said trade mark.

Result

As a result, the claimant has agreed with the arguments asserted by the Client and applied to the court for the abandonment of the lawsuit. The court has accepted such a motion and terminated the proceedings on the case. Due to the lawsuit abandonment and termination of the proceedings on the case, the Defendant shall not be obliged to pay a monetary compensation amounting to 1,000,000 Russian roubles, which has been claimed by the franchisee as well. The decision of the court of first instance has not been appealed and has entered into force allowing the Client to recover the court fees incurred afterwards.

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