5 Million Award in Domain Name Dispute
INTELLECT represented client in domain name dispute, unfair competition case.
INTELLECT represented Eastern Europe's biggest manufacturer of flexible heat-insulated plastic pipes for central heating and hot-water supply distribution networks, PolymerTeplo, in a domain name dispute compounded by a flagrant trademark infringement and unfair competition.
In 2015 PolymerTeplo found, to its dismay, a website with the domain name www.polimerteplo.ru (differing only by one letter from the client's national domain name www.polymerteplo.ru), whose owner not only advertised and promoted directly competing products on the site, but also claimed they were PolymerTeplo products' counterparts.
Represented by Maxim Labzin, Vadim Stetsenko and Anastasia German, INTELLECT-S, PolymerTeplo sued the registrant of the intentionally confusing domain name and the competing pipe manufacturer over the trademark and business name infringement and unfair competition. Acting as counsel for the plaintiff, INTELLECT-S attorneys spectacularly demonstrated the poacher’s and competitor’s bad faith, malice and fraudulent intent to mislead customers, which had caused PolymerTeplo large unquantifiable losses which the court estimated at RUB2.5 million, in addition to injuncting the use of the poached domain name by its judgment handed down on 27 July 2017 (Case No. А41-8887/2016).
After an unsuccessful appeal, the first defendant appealed in cassation, alleging, in disproof of its all earlier admissions, that it was neither the owner of the website nor the domain name registrant.
In reality, the official registrant was a doppelganger namesake entity with the identical business name, although the website displayed the first defendant's registration details and address. This belated discovery was in fact an admission that the defendant had committed a deliberate perjury and mislead the plaintiff and the judges of the trial and appellate courts. On the plaintiff's motion, the cassation appeals court returned the case for rehearing.
Represented by INTELLECT-S in the new trial, PolymerTeplo compellingly demonstrated active collusion between the first defendant and the namesake domain name registrant, who jointly operated the website to the plaintiff's detriment. The court increased the damages 2.5 times to RUB5 million by its 16 June 2017 judgment, holding the namesake twin defendants jointly and severally liable.
The appellate court denied the defendant's appeal.
Later on — in December 2017 — the court awarded PolymerTeplo a small compensation (RUB100,000) in a separate suit against the initial (individual) registrant of the domain name, who had had it registered in his name and later permitted the other defendant to use it for its website.
The damages awarded by the court (RUB5 million) make the largest ever award in the history of Russian domain name litigation.
The successful protection against malicious unfair competition, however, has more value for the client which had suffered an unquantifiable loss of business and profits and could be suffering greater potential losses in the future.