Panellist orders transfer of name registered during sunrise period

China

The Hong Kong International Arbitration Centre (HKIAC) has decided a case (DCN-0400015) involving two '.cn' domain names, one of which was registered during the priority period for registrations of second-level '.cn' names in 2003 (see China opens the door to '.cn' registrations). HKIAC was appointed by the China Internet Network Information Centre (CNNIC) as an authorized domain name dispute resolution provider for '.cn' domain name disputes in 2002.

The respondent, Shengyang Zhongxu Economic Trade Limited, registered 'patekphilippe.com.cn' on June 5 2001 and 'patekphilippe.cn' on March 17 2003. The complainant, Patek Philippe SA, is a world famous watch manufacturer with its principal place of business in Switzerland.

The complainant adduced evidence that the substance of the disputed domain names (ie, 'patekphilippe') was identical to or confusingly similar to its PATEK PHILIPPE trademarks, the first of which was registered in the People's Republic of China in 1992. In addition, the complainant argued that the respondent:

  • had no rights or legitimate interests in the disputed domain names as it had never used them, and the domain names did not lead to any operational websites. Further, there was no relationship between the complainant and the respondent that would give rise to any licence, permission, endorsement or authorization by which the respondent could own or use the disputed domain names;

  • registered the domain names in bad faith - the complainant produced email correspondence between its authorized representative and the respondent's administrative contact in which the unreasonably excessive amount of $1 million was requested to effect the transfer or sale of the disputed domain names;

  • registered the disputed domain names to prevent the complainant from reflecting its name and mark in corresponding '.cn' domain names. The respondent's registration of the third-level domain 'patekphilippe.com.cn' in 2001 made it eligible to register the second-level domain name 'patekphilippe.cn' during the priority registration period in 2003. This period was open only to existing registrants of third-level '.cn' domain names; and

  • had engaged in a pattern of conduct in relation to the rightful owners of other brands and names, as supported by evidence from CNNIC's Whois database.

The respondent did not submit a response.

The sole panellist ruled in favour of the complainant and ordered the transfer of the disputed domain names to the complainant. Of particular note was the panellist's acceptance of the argument that the registration of a second level '.cn' domain name during the priority registration period can be construed as an intention to prevent others from registering the same, which amounts to bad faith.

Gabriela Kennedy and Paloma Wong, Lovells, Hong Kong

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