YILI mark puts UDRP panels at odds
Panels at the Asian Domain Name Dispute Resolution Centre (ADNDRC), applying the Uniform Domain Name Dispute Resolution Policy (UDRP), have reached opposite conclusions in three cybersquatting cases involving the same well-known Chinese character trademark or its translation, ordering the transfer of the disputed domain name in two cases while rejecting the complaint in the third.
Inner Mongolia Yi Li Group Holdings Limited is the producer of dairy products. It filed complaints with the ADNDRC for the transfer of 'yili.com', the Chinese character version of 'yili.com', and 'yili.net'.
In 1999 the PRC Trademark Office found Yi Li Group's Chinese character trademark (which translates as YI-LI) to be well known. Also, Yi Li Group had registered the mark YILI in China for a wide range of goods and services, but not internet or related services.
The first complaint was filed against the registrant of the Chinese character version of 'yili.com'. The registrant had not used the disputed domain name and did not file a response to the complaint.
The panel held that the characters used in the domain name were identical to Yi Li Group's well-known mark. The panel also found that the respondent had registered the domain name in bad faith and therefore ordered its transfer.
The second dispute involved 'yili.com', which had been registered by Changshu Yi Li Fashion Company Limited. The panel took into consideration:
- an email in which Changshu justified the registration of the domain by claiming that one of its products is named 'Yi Li Down';
- Changshu's claim that many Chinese characters can be translated as 'yili';
- Yi Li Group's allegation that Changshu had offered to sell the domain name for a considerable sum; and
- Yi Li Group's registration of the mark YILI.
The panel, on the basis of all the relevant facts and in accordance with the UDRP and the UDRP Rules, concluded that the domain name was confusingly similar to the complainant's mark to which Yi Li Group has rights, and thus ordered its transfer.
The final case involved 'yili.net', which had been registered by an individual named Cai Wensheng. Cai claimed that his website provides email and domain name registration services to people in the Yili Kazak Autonomous Region in Xinjiang Province.
The panel held that the domain name is confusingly similar to Yi Li Group's mark YILI, but that the goods and services to which the YILI mark is applied are unrelated to the internet services provided by Cai. The panel also found that Cai has a legitimate interest in the domain name and that no bad faith could be inferred. Thus, Yi Li Group's request for transfer of the domain name was denied.
Rebecca Lo, Linklaters, Hong Kong
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