In line with China’s declared intention to improve its laws and procedures for the protection of intellectual property rights, China Internet Network Information Center ("CINIC") published the Measures for Resolving Domain Name Disputes ("Measures") on 14 February 2006, which came into effect on 17 March 2006. These Measures regulate disputes arising from CN domain names and Chinese domain names administered by the CINIC. The Measures will supersede the Measures for Domain Name Dispute Resolution published on 20 September 2002.
The Measures are applicable to disputes resulting from registration or use of domain names. Pursuant to the Measures, all disputes concerning CN and Chinese domain names must be accepted and resolved by dispute resolution institutions recognised by CINIC. Any organisation or individual who considers a registered CN or Chinese domain name as conflicting with its legitimate interests may lodge a complaint with any of the dispute resolution institutions.
Upon receipt of the complaint, the dispute resolution institution will form an expert panel comprising one or three members with expertise in internet technology and related laws and regulations to review the complaint. The expert panel is required to consider the complaint and give its ruling within 14 days from the panel’s formation pursuant to Article 5 of the Measures.
The Measures set out a list of matters which will be considered supportive of complaints made in accordance with the Measures. Pursuant to Article 8, a complaint should be supported where :-
- the domain name in dispute is identical with or confusingly similar to the name or mark in which the complainant has legal rights and interests;
- the registered holder of the domain name in dispute does not have any lawful rights or interests in respect of the domain name or a major part thereof; and
- the registered holder of the domain name in dispute has registered or used the subject domain name with malicious intent.
Any of the following cases may be regarded as evidence of the respondent’s legitimate interest in the domain name :-
- the respondent’s use of the domain name or a name similar to that domain name is in connection with a genuine offering of goods or services;
- the respondent’s domain name has acquired a reputation even though it has not been registered as a trade mark;
- the respondent has acquired a legal and non-commercial or fair use of the domain name, without any intention to mislead customers.
Malicious Registration Or Use
Not all domain name registrations registered for sale or rent will necessarily be treated as having been registered in bad faith. Pursuant to Article 9, a domain name may be considered maliciously registered or used if :-
- the registered holder has registered or acquired the subject domain name for the purpose of selling, leasing or transferring it to the complainant or its competitors for profit;
- the registered holder has on many occasions registered domain names in which others have lawful rights and interests, so as to prevent others from using them;
- the registered holder has registered or acquired the subject domain name to damage the reputation or disrupt normal business operation of the complainant, creating confusion or misleading the general public.
Where the expert panel rules in favour of the complainant, it may direct that the domain name be deregistered or that the registration be transferred to the complainant.
It should be noted however that there is a limitation period imposed under the Measures. Pursuant to Article 2, where a domain name has been registered for more than 2 years, no complaint about such domain name will be accepted by any dispute resolution institution.
Further, the procedures set out in the Measures do not exclude court litigation or arbitration. Rather, the Measures expressly provide that parties to a complaint may resolve disputes through the People’s Court in China or arbitration where there exists agreement to arbitrate.
In essence, the Measures have strengthened the lawful rights of brand and trademark owners and make it more difficult for others to infringe such rights over the internet. Further, they also provide a more speedy and efficient method to address disputes about CN and Chinese domain names.
Our China Department regularly advises foreign investors on their investments and business set up and associated intellectual property issues in the People’s Republic of China and will be happy to assist you with any inquiries you may have.
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.