In practice, once certain criteria are met, complaints for domain name disputes can be efficiently upheld and enforced
The procedure for handling domain name disputes is unique, and most of the complaints concern top-level domains (TLDs). TLDs can be divided into generic top-level domains (gTLDs) and country code top-level domains (ccTLDs).
Depending on the type of TLDs involved in the dispute, the complainant will need to file separate complaints with different domain name dispute resolution arbitrators.
GENERIC TOP-LEVEL DOMAINS
For disputes over gTLDs such as names ending with .com, .net, .info, .org and .edu, a complaint can be filed with the Asian Domain Name Arbitration Resolution Centre, the World Intellectual Property Organisation, the Arab Centre for Domain Name Dispute Resolution, the Canadian International Internet Dispute Resolution Centre, the Czech Arbitration Court Arbitration Centre of Internet Dispute, and the National Arbitration Forum in the US.
The Internet Corporation for Assigned Names and Numbers has authorised these six organisations to resolve disputes relating to gTLDs. Under the Uniform Domain Name Dispute Resolution Policy, a complainant may seek the revocation, transfer or change of generic top-level domain names.
Three criteria are required for a gTLD dispute complaint to be upheld:
(1) the domain name is “identical or confusingly similar” to the aggrieved trademark;
(2) the owner has no rights or legitimate interests in the domain name; and
(3) the domain name has been registered and is being used in bad faith. The complainant must provide evidence to prove that the above three conditions are present simultaneously.
The respondent’s bad faith can be demonstrated in the following four circumstances: (1) the respondent registered or acquired the domain name primarily for selling, renting or transferring it to the complainant as the trademark owner, or to its competitors for a high return; (2) the respondent registered the domain name to prevent the trademark owner from reflecting its mark in the corresponding domain name; (3) the respondent registered the domain name primarily to disrupt the competitor’s business; and (4) the domain name has been intentionally used to attract, for commercial gain, online users to the respondent’s website or URL by creating confusion that the goods sold or services provided are associated with the trademark owner.
The respondent can be determined to have acted in bad faith if one of the four circumstances are substantiated with evidence.
COUNTRY CODE TLDS
Disputes of country code top-level domain names for China involve domain names ending with .cn or “.中国”, which can be reported to the China International Economic and Trade Arbitration Commission (CIETAC) and the Domain Name Dispute Resolution Centre for resolution. According to article 14 of the China ccTLD Dispute Resolution Policy (CNDRP), the complainant may seek to transfer or revoke the disputed domain name.
Article 8 of CNDRP states three necessary conditions for an upheld complaint:
- The disputed domain name is identical with, or confusingly similar to, the complainant’s name or mark in which the complainant has civil rights or interests;
- The disputed domain name holder has no right or legitimate interest in the domain name or major part of the domain name; and
- The disputed domain name holder has registered or used the domain name in bad faith.
The first condition stipulates that the complainant has civil rights and interests in the name or mark, and the complaint mainly concerns prior rights such as the right to register and use the enterprise name (trademark), and the rights to the name, copyright, domain name rights, etc.
Article 9 of the CNDRP provides for four circumstances under which the respondent can be considered to be acting in bad faith; the first three are explicit, while the fourth is a miscellaneous provision. The most common fourth type of bad faith includes the respondent’s use of the disputed domain name to operate illegal websites such as gambling, football betting, disguised gambling for jackpot sales, pornography, loan shark lending and other acts that seriously violate the public order and good morals.
The complainant is advised to collect and organise evidence with the above-mentioned provisions in mind.
With the authorisation of the domain name administration and the co-operation of the registration service provider, the domain name dispute resolution body can pinpoint the respondent. As the domain name is under the control of the registration service provider, who ensures the carrying out of the verdict, the resolution of the domain name dispute is often efficient, controllable and smooth in implementation.
The dispute resolution procedures, including submission, filing, exchange of evidence, defence and serving arbitration results, are all conducted online with efficiency and speed.
Foreign complainants are not required to have their signed power of attorney notarised by a local notary or certified by a Chinese embassy in their country, as long as they entrust an agent in China to file a complaint against the disputed domain name, which greatly reduces the financial and time costs, and minimises risk during the pandemic.
Domain name dispute complaints only focus on domain name ownership, and provide resolutions regarding cancellation, revocation or transfer of the disputed domain names without involving any other infringement liability. If the complainant wishes to obtain remedies for general infringement such as elimination of influence, restoration of reputation, compensation for damages, etc., they can only do so through litigation, arbitration and other procedures.
In short, as a unique procedure for domain name dispute cases, complaint handling is controllable, easy to implement, efficient and relatively low cost.
Chu Fuhai is a Attorney-at-law, Trademark Attorney at CCPIT Patent and Trademark Office. He can be contacted at +86 10 6604 6304 or by email at email@example.com