Kangxin Partners PC - China
China now has a comprehensive system in place for resolving disputes between rights holders and domain name holders in cases where these conflict
Unlike for trademarks, there is no concept of similarity when it comes to domain names in China – any domain name can be registered, provided that it is not identical to a previously registered domain name. Further, domain names are registered on a first come, first served basis. Given the number of top-level domains (TLDs), it is not generally feasible for trademark owners to register domain names for all possible variations of their marks.
In practice, rights holders usually settle for one or two domain names, which they then use to direct users to their website. More registrations than this can be wasteful and expensive. It is recommended that rights holders focus registrations on countries or areas where they already have business interests or plan to launch them. When it comes to similar domain names registered by other parties, rights holders can either choose to ignore them (if the domain name is not being used or is causing no actual damage) or file a domain name dispute or lawsuit.
Domain name disputes
Disputes over domain names in the ‘.cn’ country-code top-level domain (ccTLD) must be raised within two years of the domain name’s registration. The situation is different for domain names in the TLD ‘.com’, where there is no deadline for filing a dispute.
According to Article 8 of the China Internet Network Information Centre’s (CNNIC) Domain Name Dispute Resolution Policy, a complaint against a registered domain name is likely to prevail under the following conditions:
- The disputed domain name is identical or confusingly similar to a trade name or mark in which the complainant has civil rights or interests;
- The owner of the disputed domain name has no right or legitimate interest in the domain name or a major part of it; and
- The owner of the disputed domain name has registered or has been using the domain name in bad faith.
The examiner will go through the points one by one and halt the examination if it finds that a point is not satisfied.
Similar or confusingly similar domain names and trademarks
Rights holders tend to file disputes based on their exclusive trademark rights. These can be proved easily by submitting a copy of the trademark registration certificate.
The examination criteria for similarity between a domain name and a trademark are similar to those that apply in trademark examinations. In particular, examiners are looking to see whether there is any confusing similarity – no account is taken of the goods or services being designated by the trademark in question.
Domain name holder’s rights
Often a domain name owner has no legal right or legitimate interests in the domain name at issue – the domain name has been registered merely to sell it on. It is not uncommon for such domain names to direct users to a website which is empty or carries only a notice indicating that the domain name is available for sale or transfer. In such cases it is easy to demonstrate that the domain name owner has no legal right or legitimate interest in the domain name.
If a domain name owner also holds a valid trademark registration, it will be considered to have a legal right to register the domain name – regardless of whether the mark was registered after the domain name. Consequently, an examiner will likely halt an examination at this point without going on to examine whether the owner may have been acting in bad faith.
According to Article 9 of CNNIC’s Domain Name Dispute Resolution Policy, any of the following may be viewed as evidence that a domain name has been registered and is being used in bad faith:
- The owner registered or acquired the domain name only in order to sell, rent or otherwise transfer it to the complainant, which owns the corresponding trade name or trademark, or to a competitor of the complainant in order to obtain an unjustified benefit;
- The owner makes a habit of registering domain names in order to prevent the owners of the corresponding trademarks or trade names from registering them;
- The owner has registered or acquired the disputed domain name in order to damage the complaint’s reputation, disrupt its business or create confusion between its domain name and the complainant’s mark in order to mislead the public; or
- There are other circumstances which prove bad faith.
A direct or indirect statement on the website to which the domain name directs users indicating that it is for sale is the most common way to prove a domain name owner’s bad faith. Another is where the owner has registered many other domains which are the same or similar to registered trademarks owned by third parties, thus indicating that it may be a cybersquatter. The reputation of the trademark at issue will also be considered when deciding bad faith – where possible, the rights holder should submit evidence to demonstrate that its mark is well known. Finally, where the owner of a disputed domain name uses it to publish deceptive advertisements or to sell counterfeit products, this not only will demonstrate bad faith, but also may prompt a rights holder to file a civil lawsuit.
If a ‘.cn’ domain name has been registered for over two years and it is no longer possible to file a dispute under CNNIC’s Domain Name Dispute Resolution Policy, the rights holder can file a lawsuit if the domain name’s owner is using the website to which the domain name directs users to conduct infringing activities (eg, selling counterfeits or publishing deceptive ads) based on the Trademark Law and the Anti-unfair Competition Law. If the rights holder wins its suit, the court can order that the website be shut down and the domain name be transferred to the rights holder.
Samiko Sun obtained her BSc in information systems and management from Beijing Technology and Science University in 2007 and her master’s in IP management from the National University of Singapore in 2009. Ms Sun joined Kangxin in 2010, where her main areas of practice include trademarks, copyright, domain names and customs. She has considerable experience in trademark prosecution, including applications, oppositions, recordal of trademark assignments, recordal of trademark licence agreements, customs recordal of registered trademarks, domain name registrations and dispute resolution, as well as copyright recordal.