Being squatted of your own domain name? Arbitration helps
Being squatted of your own domain name? Arbitration helps
Just as a house number is to a building, so a domain name is to a website, guiding readers to their desired destinations. Business owners tend to register a domain name with their brands for brand development and as greater traffic to their websites in the shortest time as possible. The process for registering a new domain name is easy and fast with the rule of “first-apply, first-register” as long as there is no prior identical domain name existing, squatters have been lured to exploit the resource, taking the free ride of reputable brand owners, but this also brings misleading damage to relevant consumers’ legal rights.
What can we do if being squatted with domain name registration by others? Negotiation for assignment might make you feel uncertain about the cost, a civil lawsuit would bring you into a long judicial proceeding process that might take years. Comparatively, to go through the arbitration proceeding would be a good option to solve the domain name dispute.
1. Definition of domain name arbitration
It involves filing a complaint with an institution for domain name dispute resolution, in an attempt to have a registration canceled or transferred to the complainer based on the arbitrator’s administrative decision.
2. Domain name dispute resolution institutions in China
There are various arbitration organizations in China for different types of disputes. For those concerning generic top-level domains (gTLD), for instance, .com, .net, .org and so on, complaints may be filed with organizations certified by the Internet Corporation for Assigned Names and Numbers (ICANN).In practice, when a Chinese party is involved, the complainer often takes the case to the Asian Domain Name Dispute Resolution Centre (ADNDRC), whose Beijing Office is run by the China International Economic and Trade Arbitration Commission (CIETAC), and Hong Kong Office by the Hong Kong International Arbitration Centre (HKIAC).
In the meantime, similar mechanisms and institutions have been established for disputes over .cn,.com.cn and a collection of Chinese domains used within the country. They are also handled by the CIETAC and the HKIAC.
3. Mechanisms and rules for domain name dispute resolution
Institutions arbitrate in gTLD-related disputes based on the Uniform Domain Name Dispute Resolution Policy (UDRP) and the UDRP Rules acknowledged by the ICANN. As for national domains in China, the relevant disputes are handled pursuant to the China Internet Network Information Center (CNNIC) Domain Name Dispute Resolution Policy (CNDRP) and the CNDRP Rules.
4. Grounds for decisions by domain name dispute resolution institutions
The above-mentioned policies and rules share the same principles at the core. In summary, institutions factor in the following conditions when they decide whether a domain name should be canceled or transferred.
The domain name in question is identical or confusingly similar to the trade name or trademark to which the complainer enjoys certain civil rights and interests
Generally, a common scenario that suffices for the above condition is the complained domain names incorporating the full name or mark cited by the rights holder. Take the disputed “Webwework” as an example. It was found to be confusingly similar to the complainer’s trademark “WEWORK” for the full use of the mark, and for the failure of the additional “Web” to distinguish the domain name because the word is too generic in the context of the Internet.
The complained holder is not legally entitled to the domain name or the main part of it
After establishing that the complained party has no authorization, no commercial exchange with the complainer, no application or registration of the mark concerned etc. to preliminarily fulfill the complainer’s burden of proof, it is the respondents turn to shake off the assumption that he/she is not entitled to his registration, as requested by arbitrators. In the dispute over “bananaboatcn”, the presiding expert panel held the same opinion and shifted the burden to the respondent after the complainer showed that there existed no authorization or distributorship between the parties.
Bad-faith registration or use of the domain name in question by the respondent
In practice, the more well-known the complainer’s cited mark is, the more likely the respondent would be found with bad faith, a critical circumstance similarly considered in trademark infringement cases. This is because a well-known mark tends to boast more exposure than usual, which helps establish that the respondent could have knowingly appropriated the mark while he/she was supposed to take reasonable measures to avoid touching upon other’s prior rights. However, in a trademark dispute, a rights holder may not be granted protection in a country where the evidence of the cited trademark’s well-known status is not sufficient, considering that intellectual property is highly regional. It turns out to be less of a concern to expert panels for domain name arbitrations when they decide whether to acknowledge some evidence generated outside the country.
JVP, a company based in Israel who had neither registration of a namesake trademark nor sufficient evidence of its use in China, took to filing a complaint against “jvpvc.cc”. Regardless of the vulnerabilities, JVP as a trademark was found to enjoy considerable fame and reputation by the expert panel, based on an enormous amount of evidence from websites and publications originated from overseas, which could have been dismissed in a trademark dispute.
It usually takes around 60days from complaint filing to service of a decision. After the decision becomes effective, the complainer may request with the concerned domain name registrar for the relevant cancellation or transfer.
Domain name arbitration has its cons though, and institutions are not in the power to grant damages, and the respondent may go on to filing a lawsuit if he/she has objections. A comprehensive review of all factors in play is necessary for reaching the best solution based on the circumstances.
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