According to the domain name system, an applicant can apply to a domain name registrar to register a domain name, and a domain name holder will acquire the exclusive right to use their domain name. in accordance with the “first to file, first to register” principle. A domain name cannot be registered twice. In other words, each domain name is unique in the cyber world and is directed to a single website.
However, when a domain name is submitted for registration by the applicant, the domain name registrar will not substantially examine the domain name to decide whether it infringes the existing rights of others. Therefore, a registered domain name may still infringe the prior rights of others. In this context, the Internet Corporation for Assigned Names and Numbers (hereinafter “ICANN”) adopted on October 24, 1999 the Uniform Domain Name Dispute Resolution Policy (hereinafter “UDRP”), allowing a holder of prior rights to file a complaint against any domain name; Upon receipt of the complaint, the ICANN-accredited Dispute Resolution Center is required to review the case on its merits in accordance with the UDRP and other relevant regulations. According to the UDRP, plaintiffs and defendants can file relevant lawsuits in courts of different jurisdictions.
Recently, Lee and Li successfully fought against the improperly registered domain name of a prior rights holder. This article will discuss and briefly introduce the enforcement and determination of abusive domain name registrations under the UDRP.
II. Determination of abusive domain name registrations
With respect to a domain name that infringes the prior rights of others, the aggrieved prior right holder may file a complaint against the abusive registration of the domain name pursuant to paragraph 4(a) of the UDRP. As indicated, the constitution of an abusive domain name registration must satisfy all of the following three elements:
(i) Respondent’s domain name is the same or similar to a trademark or service mark in which Complainant has rights; and
(ii) the defendant has no right or legitimate interest in the domain name; and
(iii) Respondent’s domain name was registered and is being used in bad faith.
(1) First Element: Respondent’s domain name is identical or confusingly similar to a trade or service mark in which Complainant has rights.
First, in accordance with Section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Issues, 3rd Edition published by WIPO (hereinafter “WIPO Overview”), the jurisdiction in which the earlier mark claimed by a plaintiff was registered is not considered relevant to the jury’s assessment. In other words, even if the jurisdiction in which a plaintiff’s claimed mark was registered is not the jurisdiction in which the defendant is located, that mark remains “the trademark or service mark on which the plaintiff has Rights”. Accordingly, the prior submission of the trademark registration in advance would be helpful in maintaining the rights of the trademark owner in the event of a related domain name dispute.
Second, it should be particularly noted that the “top level domain” in a domain name is normally ignored as part of the first element test. In addition to a prior existing trademark or service mark, a domain name would encompass a top-level domain due to the fixed form of the domain name. However, neither a traditional top-level domain (such as “.com”) nor a new top-level domain (such as “.store”) affects the determination of similarity. Moreover, the panel even sometimes believes that the top-level domain could increase the confusing similarity. For example, “.shop” may cause Internet users to think of that domain name as the online store of the owner of the prior trademark or service mark contained in the domain name.
Thirdly, a disputed domain name often alternates another’s earlier trademark or service mark with a symbol such as “_” or “-“. Nevertheless, a symbol is also frequently ignored by the jury on the grounds that the symbol is considered to have no bearing on determining the confusing similarity of the dominant part of a domain name.
(2) Second element: The defendant has no right or legitimate interest in the domain name.
With respect to the second element test, Section 4(c) of the UDRP outlines that the respondent may establish legitimate rights or interests in the disputed domain name by demonstrating one of the following:
1. Prior to any notification of the dispute to it, the respondent’s use or demonstrable preparations for the use of the disputed domain name or a name corresponding to the disputed domain name in connection with an offer of good faith of goods or services; Where
2. Defendant was commonly known by the disputed domain name, even though it did not acquire any trademark or service mark rights; Where
3. Defendant is making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to mislead consumers or tarnish the disputed trademark or service mark.
As for the definition of “bona fide”, the WIPO overview gives some examples, including the defendant’s due diligence before registering their domain name and a genuine business plan using the domain name. The above circumstances demonstrate that the respondent is providing the goods or services with a good faith intent rather than cybersquatting. However, good faith intent must be determined on a case-by-case basis.
It should be noted in particular that while the overall burden of proof in UDRP proceedings rests with the complainant, proving that “the defendant has no right or legitimate interest in a domain name” is often the impossible task of “proving a refusal” for the complainant. As such, where a Complainant establishes on a prima facie basis that the Respondent has no legitimate rights or interests, the burden of proof on this element is on the Respondent to present relevant evidence demonstrating its rights or interests. legitimate in the domain name. If the defendant presents no defense to the claim, once the plaintiff has provided a prima facie case, the court is likely to conclude that the defendant has no right or legitimate interest based on that evidence.
(3) Third Element: Respondent’s domain name was registered and is being used in bad faith.
Section 4(b) of the UDRP states that any of the following circumstances will be considered evidence of bad faith registration and use of a domain name:
1. Circumstances indicating that Respondent registered or acquired the domain name primarily for the purpose of selling, leasing, or otherwise transferring the domain name registration to Complainant or a competitor of Complainant, for further profit;
2. circumstances indicating that the defendant registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the defendant engaged in such behviour ;
3. circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; Where
4. Circumstances indicating that the Respondent is intentionally using the domain name for the purpose of attracting, for commercial purposes, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s website or location or any product or service on its website or location.
As noted in the WIPO overview, where the plaintiff’s prior trademark or service mark is very specific, the defendant cannot credibly claim that it was unaware of the presence of the mark. In the circumstances, the panel can infer that the defendant registered the domain name in bad faith. Other factors such as the chosen top-level domain, the use of the domain name and the behavior of any Respondent may also affect the determination of bad faith of the Respondent’s behavior.
The examples given in Section 4(b) of the UDRP are not intended to be exhaustive of all the circumstances from which such bad faith may be found. The Complainant may also present other evidence or circumstances demonstrating the Respondent’s malicious intent. For example, when a website run by Respondent’s domain name distributes Complainant’s property or uses one of Complainant’s works, either circumstance may be considered to have intended to s cling to the complainant, thereby constituting bad faith use. When the respondent is found to have acted in bad faith under the third element test, this often leads the court to infer that the respondent has no right or legitimate interest.
III. Conclusions and Suggestions
A domain name plays the role of an address in the cyber world and is also an important part of a business plan for a trademark holder or other trademark owners. If a rights holder can prove that all three elements of Section 4(a) of the UDRP are satisfied by registering and using another party’s domain name, the registration would be abusive. In these circumstances, the court will transfer ownership of the disputed domain name at the request of the plaintiff in order to prevent the holder of prior trademark rights, trade logos or other service marks from being harmed by the “first to file, first to register” system. As the domain name system is different from the trademark registration system, a trademark holder must, in addition to having a complete layout for his trademarks, take care in a timely manner if any of his names domain has been improperly registered by others. In the event of occurrence, disputes may be submitted through various dispute resolution centers or in court in order to maintain the brand in all its aspects.