CIETAC confirms commitment to protection of well-known marks

Hong Kong

The China International Economic and Trade Arbitration Commission (CIETAC) has proved its commitment to the protection of well-known international marks by ordering the transfer of the domain names 'jockey.com.cn', 'jockey.cn', 'philippecharriol.cn' and 'bloomberg.com.cn' to the owners of the JOCKEY, PHILIPPE CHARRIOL and BLOOMBERG marks respectively.

In the first case, Beijing CINET, a notorious cybersquatter that has registered numerous domain names incorporating famous marks, redirected the domain names 'jockey.com.cn' and 'jockey.cn' to the website of its associated company. The CIETAC expert panel held that since both domain names consisted primarily of the word 'jockey', which is a well-known trademark for underwear owned by US company Jockey International Inc, Beijing CINET's behaviour was likely to create confusion among the relevant pubic as to Beijing CINET's relationship with Jockey International.

Further, Beijing CINET failed to show usage of, or connection with, the word 'jockey' in its business or course of trade. The panel concluded that Beijing CINET registered the domain names solely to prevent Jockey International from legitimately registering the same for its own use, which amounted to bad faith.

In the case of 'bloomberg.com.cn', the initial owner of the domain name was again Beijing CINET. It ignored Bloomberg LP's request to surrender the domain name. Instead, Beijing CINET transferred it to Beijing Huaxia Golf Club Co Ltd, whose majority shareholder and legal representative was the chairman and legal representative of Beijing CINET prior to the transfer. The CIETAC panel held that Beijing CINET's initial registration of the domain name was made in bad faith and Beijing Huaxia Golf Club's subsequent acquisition was an extension of Beijing CINET's bad-faith conduct.

In the last case, the CIETAC panel also ruled that Kotobi Group had registered the domain name 'philippecharriol.cn' for the sole purpose of preventing Philippe Charriol International BV - a Swiss watch manufacturer that owns worldwide registrations for its trademark PHILIPPE CHARRIOL in different classes - from registering the domain name. Philippe Charriol submitted evidence that Kotobi had registered five other domain names consisting of, or incorporating, third parties' famous marks, which the CIETAC panel considered was further evidence of bad faith.

Yvonne Chua and Kathie Choi, Wilkinson & Grist, Hong Kong

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