In July 2021, Pavel Gross-Dneprov registered the domain www.bobcat.kz, initiating one of the most interesting cybersquatting disputes in Kazakhstan.
Doosan Bobcat North America Inc. obtained protective rights for the BOBCAT trademarks in Kazakhstan from August 2023, covering construction and agricultural machinery. Pavel Gross-Dneprov, known as a domain broker (according to 2021 data, he owned approximately 10,000 domains), registered bobcat.kz two years before this date. Doosan Bobcat North America Inc., the owner of the BOBCAT trademarks (classes 7 and 12 of the Nice classification), initiated legal action, arguing that the domain infringes its rights and misleads consumers due to the misleading similarity of the domain to the trademark, the fact that it was put up for sale, and the potential bad faith of the defendant.
The key legal challenge turned out to be the lack of similar services offered by Gross-Dneprov. According to Article 43 of the Law on Trademarks, infringement requires similarity of goods/services – which was not the case here. The court therefore analyzed the defendant’s behavior through the lens of Article 177 of the Entrepreneurial Code, which prohibits unfair practices.
The case was settled out of court – Gross-Dneprov acknowledged Doosan Bobcat’s claims, avoiding a precedent-setting ruling. Had the case gone to trial, the lawsuit would have faced significant obstacles.
One of the key issues was the lack of commercial use of the domain by Gross-Dneprov, as he did not offer any services through it. This would have prevented the application of Article 43 of the Trademark Act, which requires similarity of goods or services. Furthermore, the 2018 amendment to the law significantly weakened the position of trademark owners. Before the amendment, Article 43 of the aforementioned Act covered infringements in telecommunications networks, including the internet, which made it easier to fight cybersquatting. After the change, infringement is recognized only if there is similarity of goods or use in media, which narrowed the possibilities for legal action against unfair domain registrations.
The case revealed gaps in legal protection, particularly in cases of cybersquatting without commercial use of the domain. Such actions remain in a “gray area,” and proving bad faith requires, for example, demonstrating the speculative nature of the registration, which can be achieved by documenting the number of domains held by the defendant (as in the case of Gross-Dneprow and his 10,000 domains). The narrowing of the scope of Article 43 of the Trademark Act also shifted the burden of proof to the provisions on unfair competition, which are less precise and more difficult to apply.
For trademark owners, it is becoming crucial to implement comprehensive protection strategies. First, it is necessary to monitor domain registrations even before obtaining full rights to the trademark, in order to prevent early registrations by speculators. Second, it is important to gather evidence of bad faith, such as the defendant’s history of domain registrations or correspondence regarding the sale of the domain. Finally, it is worth considering the use of out-of-court mechanisms, such as the UDRP (Uniform Domain-Name Dispute-Resolution Policy) procedure, which in many jurisdictions allows for faster and less costly recovery of domains than traditional court proceedings.
The Doosan Bobcat vs. Gross-Dneprov case demonstrates how legal shortcomings hinder the fight against cybersquatting. Even with a settlement, the lack of precedent leaves trademark owners without the tools to effectively protect themselves in similar disputes. A solution could be to restore a broad interpretation of online infringements or introduce specific anti-cybersquatting regulations, modeled after the American ACPA (Anticybersquatting Consumer Protection Act), which clearly penalizes the registration of domains in bad faith. Until such changes are made, a combination of legal vigilance, proactive preventive measures, and the use of alternative dispute resolution methods remains crucial.
Fill out the form and we will get back to you within the next … with a preliminary quote.
