OREANDA-NEWS. January 26, 2008. Hogan & Hartson has successfully represented Volkswagen AG in a complex cybersquatting dispute in connection with the infringement of VW trademarks in the domain vw.ru., the company's press service reported.

Volkswagen AG filed a claim with the Arbitration Court of the City of Moscow against LLC Internet Company Real (OOO) to prohibit its use of VW trademarks in the domain name 'vw.ru' on the Internet. The court dismissed Volkswagen’s claim on the grounds that registration of a domain name that is identical with the trademark of an exclusive holder of such trademark does not constitute a violation if the rights holder does not prove that the domain name served as a trademark.

At the court of cassation, Hogan & Hartson’s attorneys succeeded in achieving a reversal of the decision of the Arbitration Court. The court of cassation deemed 'passive maintaining' of a domain, such as when a domain is not used for placing information on a Web site, may be an infringement of trademark rights. In particular, the court noted that possessing a domain which reproduces the trademark of a world-famous company enables the domain owner to attract to its Web site potential consumers of services similar to those for which the trademark is used by the rights holder.

This case addresses the issue of 'passive maintaining' of a domain, which has not been directly reflected in the Russian Arbitration Court case law thus far. This decision will enable holders of trademark rights to assert their rights in cases when a Web site with a domain name reproducing an identical or similar trademark is being devoid of content. Julianna Tabastajewa, counsel with the Moscow office of Hogan & Hartson, led this matter along with Moscow associate Tatiana Miteva.