The bad faith registration of domain names can disrupt businesses of brand owners. Cybersquatters may use such domains to direct web traffic to unrelated commercial entities or may even use them to sell counterfeit products, steal customers’ personal information or run deceptive schemes. This article will briefly explain the basics of domain name arbitration, which is a fast and cost-effective way in getting back the domains, and share our experience in getting successful outcomes.
I. DOMAIN NAME ARBITRATION MECHANISM
Unlike registration of other IP rights (like trademark and patent) which are normally subject to certain examination regimes, there is no examination mechanism for domain names and domain names are normally registered on a pure first-come-first-serve basis. Instead, registration of domain names is subject to domain name dispute resolution policies which provide for an arbitration mechanism. The existence of domain name arbitration mechanism enables the legitimate brand owner to challenge and recover domain names that are registered by bad faith cybersquatters in a fast and cost-effective manner. Generally, decisions will be handed down in around 2 months from the date of filing of complaint, and the transfer or cancellation of the disputed domain name may be completed in 1 month’s time upon the handing down of the decision.
II. DOMAIN NAME ARBITRATIONS: THE BASICS
While different domain names will be under different domain name dispute resolution policies, for example .cn and .中国 are subject to China ccTLD Dispute Resolution Policy (CNDRP), whereas .hk and .香港 are subject to the Domain Name Dispute Resolution Policy (DNDRP), the complaint requirements are more or less the same. In general, complainants shall establish all of the following:-
- the disputed domain name is identical with or confusingly similar to the complainant's name or mark in which the complainant has rights;
the registrant has no right or legitimate interest in respect of the disputed domain name; and
the registrant has registered or has been using the domain name in bad faith.
A specific point to note is that some domain name dispute resolution policies may impose limitation period that the domain name arbitration must be commenced within a particular time counting from the date of registration. Currently, amongst the common generic top-level domains, .cn / .中国 imposes a 3-year limitation period. If domain name arbitration against .cn / .中国 domain is not commenced within 3 years from registration, domain name arbitration will not be available.
III. OUR TIPS FOR DOMAIN NAME ARBITRATIONS CONCERNING .cn AND .hk DOMAIN NAMES
1. Local Trademark Registration is not a necessity
Similar to trademark squatting, it is not uncommon that cybersquatters have registered for confusingly similar domain names before brand owners enter the Chinese market. While a prior local trademark registration will serve a good basis for domain name complaints, its absence does not necessarily defeat a domain name complaint. Complaints can also be based on prior use of an unregistered mark which has acquired reputation, or even other IP rights.
In our recent case against a .hk domain name, we successfully obtained favourable outcome by relying upon copyright subsisting in our client’s logo (when the client’s mark and logo were not registered in Hong Kong, while there is no registration requirement for copyright). The panel was persuaded by our argument that the distinctive part of the domain name incorporates our client’s brand name and held that the domain name and the prior copyrighted logo are confusingly similar, hence satisfying the first requirement.
2. Domain Names consisting of Chinese Pinyin?
“Pinyin” refers to the English transliteration of Chinese characters. For example, the Pinyin of our Chinese firm name “陳韻雲律師行” is “CHEN YUN YUN LU SHI HANG”, while our official English name is “Vivien Chan & Co.”. Chinese cybersquatters sometimes may register domain names consisting of Pinyin instead of using directly the official English name of the brand owner to try diverting businesses. While the Pinyin and its Chinese equivalent are visually dissimilar, we have successful cases convincing the panel to accept that the Pinyin used by the cybersquatter is similar to the Chinese mark of the brand owner.
3. What if Registrants own Prior Trademarks?
It is common for cybersquatters to register both trademarks and domain names at the same time. Domain name complaints may be dismissed if registrants can show that they own prior trademark applications / registrations. Under such circumstances, we will have to devise an action plan in removing such prior marks before dealing with the domain names.
In our recent case, our client’s ex-distributor filed pre-emptive applications for our client’s house marks and registered a domain name on which the ex-distributor used our client’s house marks to promote their goods. We devised a workable action plan for our client and successfully got rid of all the pre-emptive applications on the ground of bad faith, and prevailed in subsequent domain name complaints resulting in the transfer of the domain name to our client.
To combat cybersquatting, the brand owner may also consider setting up domain name watch system, particularly for .cn / .中国 domain when there is limitation period for utilizing the domain name arbitration mechanism. It is advisable to take action earlier than later as cybersquatting may not only divert your businesses but may also damage your reputation when it is used for deceptive schemes.