A court in Moscow ordered Nalim Development, which has 4.5 thousand domain names registered in the .ru zone, to transfer administration to the electronics distributor diHouse domain dihouse.ru. 20 years ago it hosted the official website of the distributor, but during the period when the diHouse brand was not used, control over the domain was lost. The courts have already required Nalim Development to stop using well-known brands in domains – in particular, the word Puma. A similar claim by Uralkali will be considered in December.
On October 23, the Moscow Arbitration Court issued a decision on the claim of the IT distributor diHouse against the company Nalim Development Ltd, registered in Seychelles islands. It follows from it that Nalim Development must transfer to the plaintiff the administration of the dihouse.ru domain it owns. According to archived copies on the Wayback Machine, the disputed domain hosted the official website of the distributor diHouse, then part of the DPI group, in 2002–2003. Now the official website of the distributor is located on the di-house.ru domain.
Nalim Development Ltd is one of the largest .ru domain administrators. According to statonline.ru, it manages 4.5 thousand domains in this zone (for comparison: Sber has 1.2 thousand .ru domains, Microsoft – 777, VK – 490).
Most of these domains are registered by Salenames, which offers services for buying and selling premium domains. According to whois data, dihouse.ru is also registered in Salenames, but the domain is not put up for sale. Salenames LLC was the third party in the dispute.
The diHouse brand was not used from 2003 to 2007. In 2003–2005, the domain dihouse.ru redirected to the DPI website, but in 2006 a stub site of the Austrian company Suchknecht GmbH appeared on it. She, according to the whois change history service from reg.ru, was the domain administrator until August 2007. At different times, they became private individuals, the Datahost company from Belize, and since September 2020 – Nalim Development.
Legal disputes with Nalim Development around the dihouse.ru domain have been going on since July 2020, the latest decision was made on the second claim. In November 2022, the court, considering the first claim, prohibited Nalim Development from using the diHouse brand name in the domain. In May, the court, following a lawsuit by the German clothing brand Puma, banned Nalim from using its brand name in the puma.ru domain. A hearing on the claim from Uralkali (the disputed domain is uralkali.ru) has been scheduled for December 21.
5.16 million domains were registered in the .ru zone by October 24, according to the Internet Technical Center.
Kommersant contacted Nalim Development through a form on the Salenames website, but did not receive a response. diHouse declined to comment. Salenames development director Robert Gledenov, who together with his brother Denis is known for mass domain registration in the 2000s, did not respond to Kommersant’s request.
Those who register domains identical to company names expect to receive payment from them as part of a pre-trial agreement or privately, says Roem.ru editor-in-chief Yuri Sinodov. The loss of some domains during the dispute, according to him, does not significantly affect the profitability of mass registration: “For those who do this, the main risk is that no one will ever need the domain.”
Statutes of limitations do not apply to domain disputes, “since the registration of a domain that violates a trademark right is considered as a continuing offense,” says Ekaterina Tilling, head of the intellectual property practice at Birch Legal. The decision of diHouse to demand that domain administration be transferred to it, according to the expert, can be explained by “the decision to change the strategy to a more effective one.” Deputy Head of Patentus Dispute Resolution Practice Maxim Volkov noted that the writ of execution for the first decision in favor of diHouse was issued with a delay: “And apparently, it was not possible to achieve the desired results with its help.” As a general rule, the plaintiff does not need to resort to such “multi-stages,” he notes: “It is recommended to involve the registrar as a third party and apply for interim measures in the form of a ban on changing the domain administrator.”