In practice, once certain criteria are met, domain name dispute complaints can be effectively confirmed and enforced.
Jhe domain name disputes process is unique and most complaints relate to 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 regarding gTLDs such as names ending in .com, .net, .info, .org, and .edu, a complaint may be filed with the Asian Domain Name Arbitration Resolution Center, the World Intellectual Property Organization, the Arab Center for Domain Names Dispute Resolution, the Canadian International Internet Dispute Resolution Centre, the Czech Arbitration Court Arbitration Center of Internet Dispute and the National Arbitration Forum in the United States.
The Internet Corporation for Assigned Names and Numbers has authorized these six organizations to resolve gTLD disputes. Under the Uniform Domain Name Dispute Resolution Policy, a complainant may request the revocation, transfer, or modification of generic top-level domain names.
Three criteria are required for a gTLD dispute complaint to be accepted:
(1) the domain name is “identical or confusingly similar” to the infringed trademark;
(2) the owner has no right or legitimate interest 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.
Respondent’s bad faith can be demonstrated in the following four circumstances: (1) Respondent registered or acquired the domain name primarily to sell, lease, or transfer it to Complainant as the trademark owner, or its competitors with a high return; (2) the defendant 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 drive online users to the Respondent’s website or URL for commercial purposes by creating confusion that the goods sold or services provided are associated with the Owner. of the brand.
It can be determined that the respondent acted in bad faith if one of the four circumstances is supported by evidence.
TLDS COUNTRY CODE
Disputes over country code top-level domain names for China involve domain names ending in .cn or “.中国”, which may be referred to the China Commission for International Economic and Trade Arbitration (CIETAC ) and the Domain Name Dispute Resolution Center for resolution. According to Article 14 of the China ccTLD Dispute Resolution Policy (CNDRP), the complainant may request the transfer or revocation of the disputed domain name.
Article 8 of the CNDRP sets out three conditions necessary for a complaint to be upheld:
- The disputed domain name is identical or similar to the complainant’s name or trademark in which the complainant has civil rights or interests;
- The holder of the disputed domain name has no right or legitimate interest in the domain name or the major part of the domain name; and
- The holder of the disputed domain name registered or used the domain name in bad faith.
The first condition states that the plaintiff has civil rights and interests in the name or trademark, and the complaint mainly relates to prior rights such as the right to register and use the company name (trademark) , and the rights to the name, copyright, domain name rights, etc.
Article 9 of the CNDRP provides four circumstances in which the defendant can be considered to be acting in bad faith; the first three are self-explanatory, while the fourth is a miscellaneous layout. The fourth most common type of bad faith includes the defendant’s use of the disputed domain name to operate illegal websites such as gambling, football betting, disguised gambling for sale jackpots, pornography, loan sharking and other acts that seriously violate public order and moral good.
The Complainant is advised to collect and organize evidence with the above provisions in mind.
With the permission of the domain name administration and the cooperation of the registration service provider, the domain name dispute resolution body can identify the respondent. Since the domain name is under the control of the registration service provider, which ensures the execution of the verdict, the resolution of the dispute relating to the domain name is often efficient, controllable and fluid in its implementation.
Dispute resolution procedures, including submission, filing, exchange of evidence, defense and service of arbitration results, are all conducted online with efficiency and speed.
Foreign complainants are not required to have their power of attorney certified by a local notary or certified by a Chinese embassy in their country, as long as they appoint an agent in China to file a complaint against the disputed domain name , which significantly reduces the financial and time costs, and minimizes the risks during the pandemic.
Domain Name Dispute Complaints focus solely on domain name ownership and provide solutions regarding the cancellation, revocation, or transfer of disputed domain names without involving any further liability for infringement. If the plaintiff wishes to obtain remedies for general breach such as removal of influence, restoration of reputation, compensation for damages, etc., he can only do so through litigation, arbitration and other proceedings.
In short, as a single procedure for domain name disputes, Claims Handling is controllable, easy to implement, efficient, and relatively inexpensive.
Chu Fuhai is a trademark attorney and attorney in the Patent and Trademark Office of CCPIT. He can be contacted on +86 10 6604 6304 or by email at [email protected]