It’s not uncommon for site owners to discover that someone has created a site with similar content and a domain name that sounds similar. In addition to the obvious violation of exclusive rights, the owner of a duplicate site may intentionally post information that harms
the business reputation of the copyright holder or misleads consumers, as well as take part of the traffic of the original site. So, recently, the St. Petersburg club "A2" told that tickets for two or more times more expensive are sold on a site similar to the original a2-tickets.com [1].
In this note, we will discuss how to minimize risks and defend your rights, if they have already been violated. But before we consider the main ways of prevention and control, let's turn to the theory.
Website as a result of intellectual activity
The site can be viewed in two aspects: as a single composite work, and as a set of components, each of which is an independent RIA or PD.
In legal doctrine, an Internet site is sometimes understood as a complex object, according to clause 1 of article 1240 of the civil code of the Russian Federation [2].
V. O. Kalyatin suggests introducing a special legal regime similar to an audiovisual work or an enterprise as a property complex [3].
However, law enforcement practice most often follows the path of protecting the rights to individual components of the site.
Judicial practice
In 2008 the Presidium of the Supreme Arbitration Court of the Russian Federation, sending the case for retrial, noted that the site may be regarded as a composite work created by the selection of items, even if some of these elements are not creative in nature (decree of the Presidium of the SAC dated 22.04.2008 No. 255/08 on business № A63-14046/2006-C1).
The Supreme Court has reached a case on the creation of sites that are duplicates of MMK's resource www.oaommk.ru, mikhailovsky.com.ru however, the plaintiff was denied, as there was no administrator of the disputed domain names among the defendants (Ruling of the Supreme Court of the Russian Federation dated 03.04.2017 №. 305-ES17-1902 in case no. A40-52455/2015).
A similar position was expressed by the CIP: when copying the site, the Registrar does not have the right to stop delegating the domain name (Resolution of the intellectual property rights Court of 07.09.2018 no.C01-543/2018 in case no. A55-11965/2017). Thus, the proper Respondent will be the domain name administrator or its actual owner.
In another case, the court found that the defendant's website violated the plaintiff's exclusive rights to the commercial designation and computer program of the Internet site.
Mikhailovsky Theater filed a lawsuit against the site owner mikhailovsky.com.ru that illegally uses the plaintiff's trademark and trade name and misleads customers by offering them gift certificates that cannot be exchanged at the theater's box office. In addition, false information about the plaintiff was posted. The content of the original site, in particular the photos, was also copied. The court partially satisfied the requirements: it prohibited the use of a designation confusingly similar to the plaintiff's trademark and trade name in the domain name and sought compensation in the amount of 100,000 rubles (Ruling of the Arbitration court of Moscow in case no. A40-224/2019-134-6 dated May 17, 2019).
What precautions we can take
Fixing rights. The right to each component of the site (image, source code, design) must be confirmed. To do this, you need to sign author's order agreements or license agreements with designers, artists, or authors that indicate that the exclusive right passes to the customer.
Registration of individual site elements. Individual components of the site can be registered,
so you should use this option. Thus, registering a trademark will help prevent an infringer from using an identical domain name. A computer program may also be registered, and the design may be patented as an industrial design.
Deposit. If you are the author yourself, print out the site pages and send them to yourself to use later as evidence in court, or post your articles and photos to organizations that do this. You will be issued a certificate of Deposit of the result of intellectual activity. In court, this can
be good evidence.
Copyright information
To notify users of the site about exclusive rights, the copyright mark – © – is used, along with the name of the copyright holder and the year of first publication.
Add a disclaimer for users stating that the content is original and copying is prohibited.
In addition, when copying text, you can technically provide for the insertion of a hyperlink and resource name, or restrict copying altogether.
Of course, such measures are unlikely to be effective if someone wants to create a duplicate site.
License agreement. Place an agreement with the user on the site that they will accept, for example, by checking a box. In this agreement, specify in what ways and to what extent the user is entitled to use the intellectual property objects posted on the site.
What should I do if your site rights have already been violated?
Applying to the Moscow city court
Thanks to the" anti-Piracy law", the Moscow city court can take preliminary protective measures to protect copyright and related rights on the Internet before the trial. Based on the definition, Roskomnadzor will notify the hosting provider, who will restrict access to the information resource if the resource owner refuses to delete disputed materials. However, blocking is a preliminary protective measure, so after it, you will have to file a claim against the violator within the procedural period specified by the Moscow city court.
Appeal to the Federal Antimonopoly service
If a duplicate site misleads users, sells goods or provides services on behalf of the original manufacturer, you can file a complaint with the Federal Antimonopoly service against the owner of such a resource for violating antitrust laws.
Contacting your hosting provider
You can try writing to the hosting provider, but it is highly likely that they will refuse to take any action without a court decision.
Claim to the violator
Find out who owns the domain using the Whois service and send a pre-trial claim to the domain administrator (owner).
Judicial recourse
To protect your rights to the site in court, you need to file a claim and prepare proof of ownership of exclusive rights and the fact of their violation.
Take screenshots of the original and duplicate sites. You can make a notarized report of the inspection or independently certify them with your signature.
The rest of the evidence depends on which map item rights are being violated. If the infringer uses your trademark improperly, then submit to the court evidence of your exclusive right (certificate of TK).
If rights to copyrighted works (articles, photos, computer programs, design objects) are violated, please provide proof that you received them from the authors on legal grounds (license agreement, contract of author's order, alienation agreement, documents confirming payment of remuneration) or created them yourself (certificate of Deposit).
Thus, different methods can be used to protect the rights to the site: pre-trial settlement, letter to the hosting provider, blocking the site through the Moscow city court, applying to the FAS, or court proceedings. However, if you are just creating a site, it is important to take care of fixing exclusive rights and registering rights to the elements that are subject to registration. This will become your evidence base in case of violation of exclusive rights.
[1] https://calendar.fontanka.ru/articles/8461/
[2] See: Mazur E. A. the Legal regime of the Internet site as a complex object under the legislation of the Russian Federation. 2013. № 1 (2). Pp. 132-134.
[3] See: Kalyatin V. O. the Internet site as an object of exclusive rights. Presentation at the V International conference "Law and the Internet: theory and practice".
the business reputation of the copyright holder or misleads consumers, as well as take part of the traffic of the original site. So, recently, the St. Petersburg club "A2" told that tickets for two or more times more expensive are sold on a site similar to the original a2-tickets.com [1].
In this note, we will discuss how to minimize risks and defend your rights, if they have already been violated. But before we consider the main ways of prevention and control, let's turn to the theory.
Website as a result of intellectual activity
The site can be viewed in two aspects: as a single composite work, and as a set of components, each of which is an independent RIA or PD.
In legal doctrine, an Internet site is sometimes understood as a complex object, according to clause 1 of article 1240 of the civil code of the Russian Federation [2].
V. O. Kalyatin suggests introducing a special legal regime similar to an audiovisual work or an enterprise as a property complex [3].
However, law enforcement practice most often follows the path of protecting the rights to individual components of the site.
Judicial practice
In 2008 the Presidium of the Supreme Arbitration Court of the Russian Federation, sending the case for retrial, noted that the site may be regarded as a composite work created by the selection of items, even if some of these elements are not creative in nature (decree of the Presidium of the SAC dated 22.04.2008 No. 255/08 on business № A63-14046/2006-C1).
The Supreme Court has reached a case on the creation of sites that are duplicates of MMK's resource www.oaommk.ru, mikhailovsky.com.ru however, the plaintiff was denied, as there was no administrator of the disputed domain names among the defendants (Ruling of the Supreme Court of the Russian Federation dated 03.04.2017 №. 305-ES17-1902 in case no. A40-52455/2015).
A similar position was expressed by the CIP: when copying the site, the Registrar does not have the right to stop delegating the domain name (Resolution of the intellectual property rights Court of 07.09.2018 no.C01-543/2018 in case no. A55-11965/2017). Thus, the proper Respondent will be the domain name administrator or its actual owner.
In another case, the court found that the defendant's website violated the plaintiff's exclusive rights to the commercial designation and computer program of the Internet site.
Mikhailovsky Theater filed a lawsuit against the site owner mikhailovsky.com.ru that illegally uses the plaintiff's trademark and trade name and misleads customers by offering them gift certificates that cannot be exchanged at the theater's box office. In addition, false information about the plaintiff was posted. The content of the original site, in particular the photos, was also copied. The court partially satisfied the requirements: it prohibited the use of a designation confusingly similar to the plaintiff's trademark and trade name in the domain name and sought compensation in the amount of 100,000 rubles (Ruling of the Arbitration court of Moscow in case no. A40-224/2019-134-6 dated May 17, 2019).
What precautions we can take
Fixing rights. The right to each component of the site (image, source code, design) must be confirmed. To do this, you need to sign author's order agreements or license agreements with designers, artists, or authors that indicate that the exclusive right passes to the customer.
Registration of individual site elements. Individual components of the site can be registered,
so you should use this option. Thus, registering a trademark will help prevent an infringer from using an identical domain name. A computer program may also be registered, and the design may be patented as an industrial design.
Deposit. If you are the author yourself, print out the site pages and send them to yourself to use later as evidence in court, or post your articles and photos to organizations that do this. You will be issued a certificate of Deposit of the result of intellectual activity. In court, this can
be good evidence.
Copyright information
To notify users of the site about exclusive rights, the copyright mark – © – is used, along with the name of the copyright holder and the year of first publication.
Add a disclaimer for users stating that the content is original and copying is prohibited.
In addition, when copying text, you can technically provide for the insertion of a hyperlink and resource name, or restrict copying altogether.
Of course, such measures are unlikely to be effective if someone wants to create a duplicate site.
License agreement. Place an agreement with the user on the site that they will accept, for example, by checking a box. In this agreement, specify in what ways and to what extent the user is entitled to use the intellectual property objects posted on the site.
What should I do if your site rights have already been violated?
Applying to the Moscow city court
Thanks to the" anti-Piracy law", the Moscow city court can take preliminary protective measures to protect copyright and related rights on the Internet before the trial. Based on the definition, Roskomnadzor will notify the hosting provider, who will restrict access to the information resource if the resource owner refuses to delete disputed materials. However, blocking is a preliminary protective measure, so after it, you will have to file a claim against the violator within the procedural period specified by the Moscow city court.
Appeal to the Federal Antimonopoly service
If a duplicate site misleads users, sells goods or provides services on behalf of the original manufacturer, you can file a complaint with the Federal Antimonopoly service against the owner of such a resource for violating antitrust laws.
Contacting your hosting provider
You can try writing to the hosting provider, but it is highly likely that they will refuse to take any action without a court decision.
Claim to the violator
Find out who owns the domain using the Whois service and send a pre-trial claim to the domain administrator (owner).
Judicial recourse
To protect your rights to the site in court, you need to file a claim and prepare proof of ownership of exclusive rights and the fact of their violation.
Take screenshots of the original and duplicate sites. You can make a notarized report of the inspection or independently certify them with your signature.
The rest of the evidence depends on which map item rights are being violated. If the infringer uses your trademark improperly, then submit to the court evidence of your exclusive right (certificate of TK).
If rights to copyrighted works (articles, photos, computer programs, design objects) are violated, please provide proof that you received them from the authors on legal grounds (license agreement, contract of author's order, alienation agreement, documents confirming payment of remuneration) or created them yourself (certificate of Deposit).
Thus, different methods can be used to protect the rights to the site: pre-trial settlement, letter to the hosting provider, blocking the site through the Moscow city court, applying to the FAS, or court proceedings. However, if you are just creating a site, it is important to take care of fixing exclusive rights and registering rights to the elements that are subject to registration. This will become your evidence base in case of violation of exclusive rights.
[1] https://calendar.fontanka.ru/articles/8461/
[2] See: Mazur E. A. the Legal regime of the Internet site as a complex object under the legislation of the Russian Federation. 2013. № 1 (2). Pp. 132-134.
[3] See: Kalyatin V. O. the Internet site as an object of exclusive rights. Presentation at the V International conference "Law and the Internet: theory and practice".