Unlike brands, there is no concept of similarity when it comes to domain names in China – any domain name can be registered, as long as it is not identical to a previously registered domain name . Additionally, domain names are registered on a first-come, first-served basis. Given the number of top-level domains (TLDs), it is generally not possible for trademark owners to register domain names for all possible variations of their trademarks.
In practice, rights holders are usually satisfied with one or two domain names, which they then use to direct users to their website. More records than that can be unnecessary and expensive. It is recommended that rights holders focus registrations on countries or regions where they already have commercial interests or plan to launch them. When it comes to similar domain names registered by other parties, rights holders can choose to ignore them (if the domain name is not used or causes any actual harm) or file a dispute or legal action.
Domain name disputes
Disputes over domain names in the “.cn” country code top-level domain (ccTLD) must be raised within two years of domain name registration. The situation is different for domain names in the ‘.com’ TLD, where there is no time limit for filing a dispute.
According to Article 8 of the China Internet Network Information Center (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 trademark 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 registered or used the domain name in bad faith.
The examiner will review the points one by one and stop the examination if he finds that a point is not satisfied.
Similar or confusing domain names and trademarks
Rights holders tend to file disputes based on their exclusive trademark rights. These can be proven easily by submitting a copy of the trademark registration certificate.
The criteria for examining the similarity between a domain name and a trademark are similar to those that apply to trademark examinations. In particular, examiners look to see if there is a confusing similarity – the goods or services covered by the mark in question are disregarded.
Rights of the domain name holder
Often a domain name owner has no legal right or legitimate interest in the domain name in question – the domain name was registered simply to resell. It is not uncommon for such domain names to direct users to a website that is empty or has only a notice that the domain name is available for sale or transfer. In such cases, it is easy to demonstrate that the owner of the domain name has no legal right or legitimate interest in the domain name.
If a domain name owner also holds a valid trademark registration, they will be deemed to have a legal right to register the domain name, whether the trademark was registered after the domain name or not. Therefore, a reviewer will likely discontinue a review at this point without continuing to review whether the owner may have acted in bad faith.
According to Article 9 of CNNIC’s Domain Name Dispute Resolution Policy, any of the following may be considered evidence that a domain name has been registered and is being used in bad faith:
- The owner has registered or acquired the domain name solely for the purpose of selling, leasing, or otherwise transferring it to the complainant, the owner of the corresponding trade name or trademark, or to a competitor of the complainant in order to to obtain an unjustified advantage;
- The holder has a habit of registering domain names in order to prevent the holders of the corresponding trademarks or trade names from registering them;
- The holder registered or acquired the disputed domain name with the aim of harming the complainant’s reputation, disrupting its business or creating confusion between its domain name and the complainant’s trademark in order to mislead the public; Where
- There are other circumstances which prove bad faith.
A direct or indirect statement on the website to which the domain name directs users that it is for sale is the most common way to prove a domain name owner’s bad faith. Another case is where the owner has registered many other domains that are the same or similar to trademarks belonging to third parties, indicating that it may be a cybersquatter. The reputation of the mark in question will also be taken into account when deciding bad faith – where possible, the rights holder should provide evidence to demonstrate that their mark is well known. Finally, when the owner of a disputed domain name uses it to publish misleading advertisements or to sell counterfeit products, this will not only demonstrate his bad faith, but may also encourage a rightful claimant to bring a civil action.
If a “.cn” domain name has been registered for more than two years and it is no longer possible to file a dispute under CNNIC’s Domain Name Dispute Resolution Policy, the right holder may take legal action if the domain name owner uses the website for where the domain name induces users to conduct infringing activities (for example, selling counterfeits or posting misleading advertisements) based on the law on trademarks and the anti-unfair competition law. If the rights holder wins the case, the court can order the closure of the website and the transfer of the domain name to the rights holder.
Samiko Sun received her BSc in Information Systems and Management from Beijing University of Technology and Science in 2007 and her Masters in Intellectual Property Management from National University of Singapore in 2009. Ms. Sun joined Kangxin in 2010, where his main areas of practice include trademarks, copyright, domain names and customs. She has considerable experience in the prosecution of trademarks, including applications, oppositions, registration of trademark assignments, registration of trademark license agreements, customs registration of registered trademarks, registrations of brand names domain and dispute resolution, as well as copyright registration.