Lawyer Tomas Jakubauskas, METIDA law firm of Reda Zaboliene

Vilnius district court on October 1, 2008 adopted a decision in a civil case filed by AB „Pieno žvaigždės“ regarding registration of domain name „pienožvaigždės.lt“.

The defendant contacted the plaintiff right after the registration of the domain name and informed that the domain name “might be interesting to AB „Pieno žvaigždės“. Since the defendant hasn’t reacted to the request to transfer the domain name to the plaintiff, the later filed a claim before the court.

This decision of the court is important because there is no previous court practice regarding unfair domain name registration in Lithuania. The decision is significant because the court by analogy looked into the EU Regulation No. 874/2004, according to which there are more than 5000 solved cases in the Czech Arbitration Court regarding unfair registration of .eu domain names. Therefore in future disputes regarding .lt domain names it will be possible to look into practice of the Czech Arbitration Court.

The court also indicated that in solving disputes regarding the domain names it is necessary to look into the international law and practice. One of the most important international bodies that solves domain name disputes is the WIPO Arbitartion and Mediation Centre (solves disputes regarding .com., .net, .info and other domain names). Therefore it will be possible to rely on the decisions of that body as well.

There are about 10 disputes regarding domain name registrations in Lithuania at the moment. There were no court decisions in these disputes so far. Some of the disputes ended with settlement agreements amongst the plaintiffs and the defendant. The trademark owners and other persons with earlier rights were reluctant to litigate: lack of national legislation and court practice in that area created uncertainty of winning the disputes in the court. Majority of the disputes are regarding domain names similar or identical to earlier trademarks or company names. In the “Pieno žvaigždės” decision the court spoke about the infringement of both the trademarks and the company name by registration of the domain name.

After analysis of the provided evidences and relying on the European, international and Lithuania law and practice the court recognized that the defendant’s activity was unfair and matched so called “cybersquatting”. The defendant infringed exclusive rights of the plaintiff to the earlier registered trademarks with words “Pieno žvaigždės” and to the company name AB “Pieno žvaigždės”. Therefore the claim was totally satisfied: the court ordered the defendant to deregister the domain name and to reimburse the plaintiff’s litigation expenses.

Although the Vilnius district court is only the first instance court in the intellectual property litigations and the defendant still has the right to file an appeal, this decision confirms trend of the Lithuanian courts to rely on the European Union and international law and court practice while solving complex matters which are not regulated by Lithuanian national law.