Steve Levy ⬥ 3 February
The Russian Legal Information Agency (RAPSI) is reporting that the Russian Ninth Commercial Court of Appeals will hear an appeal from Tissot, the luxury Swiss watchmaker and member of the Swatch Group, over Holmrook Limited’s use of the “Tissot” trademark and the domain name Tissot.ru. Back in December, the Moscow Commercial Court ruled against Tissot on the grounds that the Tissot.ru domain was operated by an authorized third party as an informational website about the French painter, James Tissot. Tissot (the brand) contended that this content was only put on the site after it had filed its suit.
Indeed, the Court’s decision does seem curious given that it had previously ruled in favor of other Swatch Group brands Rado and Longines, against Holmrook Limited, over similar trademark and domain name issues. In September 2011, for example, the court ordered the Rado.ru domain transferred to Rado and commanded that Holmrook pay out 50,000 rubles (about $1,650) to Rado in damages. Given that the Tissot suit marks the third case in which Holmrook Limited has been the defendant in domain name disputes involving Swatch Group brands, all signs seem to point towards a bad faith registration. And yet, the Russian court did not see it that way.
Unfortunately, the inconsistencies in this case are (ironically enough) quite consistent with my experience with the .RU ccTLD. The bottom line is, thanks to lax copyright enforcement and a rampant counterfeiting industry, cybersquatting flourishes in the .RU space. Compounding the problem is the lack of any kind of dispute resolution policy (DRP) for .RU domains, which leaves trademark holders with the unpalatable choice of pursuing legal action through the expensive, slow, and inconsistent Russian court system, or attempting to purchase the domain directly from the domain owner.
For brand owners, the best defense is a strong offense: I advise registering all key trademarks in the .RU domain before cybersquatters can. If you’re already too late, attempt to negotiate a sale of the disputed domain with the registrant. When all else fails, try the Russian courts as Tissot is now preparing to do for a second time. I will be closely following the appeal, which the court is scheduled to hear on February 8th.
Tags: brands, ccTLDs, copyright enforcement, cybersquatting, domain names, DRP, Holmrook Limited, James Tissot, legal action, Longines, Moscow Commercial Court, Rado, RAPSI, Russian Legal Information Agency, Russian Ninth Commercial Court of Appeals, Swatch Group, Tissot, trademark holders, watchmaker