The most popular domain names in China are CN domain names. According to "The 43rd China Statistical Report on Internet Development" released by China Internet Network Information Center (CNNIC) in February 2019, by December 2018 the number of "CN" domain names reached 21.24 million, increasing by 1.9% on a year-on-year basis and accounting for 56% of all domain names of China; "COM" domain names were 12.78 million, accounting for 33.7% of the total; "中国" (China in Chinese) domain names were 1.72 million, accounting for 4.5% of the total. As a result of the rapid development of internet and in view that domain name registration is comparatively easy, fast and cheap, cyber squatters are active in registering CN domain names for profit. Consequently, disputes over CN domain names arise.
Domain name dispute resolution procedure is a unique and efficient procedure for resolving domain name dispute. Complaints against domain names with different suffixes shall be filed with different domain name dispute resolution service providers. Domain name disputes over CN and 中国 (China in Chinese) domain names shall be accepted and resolved by China International Economic and Trade Arbitration Commission Online Dispute Solution Center (CIETAC ODRC) or Hong Kong International Arbitration Center (HKIAC) as they are accredited by CNNIC.
The Policy and Rules applicable for proceedings concerning CN and 中国 (China in Chinese) domain names are CNNIC ccTLD Dispute Resolution Policy (CNDRP) and CNNIC ccTLD Dispute Resolution Policy Rules. The dispute resolution service providers also developed their own supplementary rules based on the said Policy and Rules.
If a CN domain name containing your registered trademark or trade name is registered and used by third party, can it be retrieved through domain name dispute resolution procedures? The answer is "YES". Based on our experiences of filing CN domain name complaints with CIETAC ODRC, we would like to give you the following tips.
Confirm the registration date of the disputed CN domain name
Though CNDRP is modeled upon UDRP (Unified Domain Name Dispute Resolution Policy), CNDRP has its special regulation that "the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term of over TWO years" while UDRP does not have such limitations. The two-year term seems to be in conformity with the limitation of action as described in the General Provisions of the Civil Law before the amendment in 2017. Though procedures are totally different, the terms provided are comparable. The two-year term starts from the domain name registration date as shown in domain name whois information. It means that if the CN domain name's registration date is recorded as January 1, 2018, the domain name complaint shall be filed before January 1, 2020.
If the CN domain name is transferred from Party A to Party B during its registration period, can the two-year term recounts from the transfer date on which Party B became the domain name registrant? The answer is NO in most cases. We notice that in a Decision issued by HKIAC, the Panel referred to WIPO Overview 2.0 Second Edition, Paragraph 3.7: transfer of a domain name to a third party does amount to a new registration......Registration in bad faith must occur at the time the current registrant took possession of the domain name. However, we have to point out this is not the prevailing practice under CNDRP. Since UDRP does not have the time limit but CNDRP does, it is not common to refer to WIPO Overview which is under UDRP in CN domain name dispute resolution procedure. We suggest that domain name complaint against CN domain name be filed within the two-year registration term. For CN domain name registered for more than two years, it is still possible to retrieve it through civil litigations in the PRC in accordance with the relevant laws and regulations.
Furthermore, if a domain name dispute is handled through civil litigation channel, in addition to retrieve a domain name in question, the right holder might also have an infringer assume civil liabilities such as compensation for losses, elimination of adverse effects and making an apology, etc..
The registration date of the disputed domain name is important as it also helps to determine whether the Complainant has a "prior right" so that the domain name complaint may be supported by the Panel. Therefore it is necessary to confirm the date as the first step.
Collect evidence proving your prior rights and reputation
As regulated in Article 8 of CNDRP, three conditions shall be fulfilled for a Complaint to be supported by the Panel in CN domain name complaint and the first one is that the disputed domain name shall be identical with or confusingly similar to the Complainant's name or mark in which the Complainant has civil rights or interests.
If the domain name complaint is filed based on prior trademark right, it is suggested that the Complainant confirms its trademark is registered in the PRC prior to the registration date of the disputed domain name. Domain name complaint could also be filed based on prior right over a trade name. Then it is suggested that the Complainant submit evidence proving its business activities in the PRC and that its trade name obtained certain reputation in the PRC through use prior to the domain name registration date.
We noticed in one CNDRP Decision that the Complainant filed the complaint based on its EU registered trademarks not extended to the PRC and also a trade name without evidence proving the use and the reputation of the trade name in the PRC. The Panel did not recognize the trademark and trade name as "prior civil rights" in this case, thus did not support the Complaint.
Therefore, it is important for a Complainant to collect and keep evidence proving the registration, use and fame of its trademark or trade name in the PRC. The evidence may include brochures and other materials proving the promotion and sale of the products bearing the trademark or under the trade name in the PRC. These evidence will not only help the right owner in domain name dispute resolution procedures, but also in civil litigation against trademark infringement or unfair competition acts.
Check and confirm the Respondent's rights
It is also necessary to search and confirm that the Respondent (registrant of the disputed domain name) does not have any civil right over the main part of the domain name to satisfy Article 8.2 of CNDRP.
If the disputed domain name is registered by a company, besides checking the trademark registration status of this company, sometimes it is also necessary to check if its legal representative or shareholder has any trademark or operates any other company with a trade name related to the domain name. With adequate preparations before filing the domain name complaint, the Complainant could be ready for the defenses filed by the Respondent during the dispute resolution procedure.
Collect and submit evidence proving the bad faith of the Respondent
To satisfy Article 8.3 of CNDRP, the Complainant shall file evidence to prove the Respondent's bad faith. Article 9 of CNDRP listed some circumstances under which the registration and use of the disputed domain name may be regarded as in bad faith, including "other circumstances which may prove the bad faith" (Article 9.4).
Generally speaking, while taking into consideration of evidence proving the high reputation and fame of the Complainant's prior right, the Panel may consider the no use/ no intention to make use of the disputed domain name after registration, or the redirection of the disputed domain name to a website containing illegal content under Chinese law (for example gambling) as bad faith in registration and use of the disputed domain name, which could fall into the category of "other circumstances which may prove the bad faith".
We would like to remind the Complainant that according to Article 7 of CNDRP, the Complainant and the Respondent shall bear the burden of proof for their own claims. Therefore, if the Complainant claims that the disputed domain name is used in bad faith, it is suggested that the Complainant conduct notarized preservation or at least make screenshots of the online information and submit the Notary Deed or the screenshots while filing the domain name complaint to prove the Respondent's bad faith in use. Lacking such evidence may result in rejection of the Complaint. In previous CNDRP Decisions, the Panel considered the Complainant's failure in filing such bad faith use evidence as not proving its claim, the Complaint was rejected as it did not fulfill Article 8.3 of CNDRP.
We hope these tips will be of some use while you are considering filing CN domain name complaint. Finally, we would like to suggest the right owners file trademark registration in the PRC on time and file domain name of concerns proactively to obtain better online protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.