TM Rights In Domain Name Arbitration
Comments on the Assertions for “the Prior Application Right” as the Legal Ground during Domain Name Arbitration
Author: Sylvia Chen
Domain names generally include international top-level domains (such as .com, .nu, .tv, etc.) and domestic top-level domains (.cn), which are managed by ICANN and CNNIC respectively, and are subject to Uniform Domain Name Dispute Resolution Policy(hereinafter referred to as UDRP) and China ccTLD Dispute Resolution Policy respectively. The arbitration rules of the domestic top-level domain have evolved from UDRP, which is only slightly different in expression. We will talk about mainly about the most universally applicable rule, UDRP with this article, and the arbitration cases used as examples are adapted from WIPO.
Trademark functions as an important sign to distinguish the source of goods and services from one another, and for the internet world, the domain name, aka website, acts as an important code for users to identify goods, services, and business.
In recent years, Chinese enterprises have gradually enhanced their awareness of Internet brand protection, and an increased number of enterprises have realized the importance of registering domain names for brand integrity. However, due to the low threshold of application, the amount of domain name registrations has skyrocketed year by year (See the chart below), so are the related disputes. Identical or similar domain names registered by the third parties with bad faith tend to have a higher possibility of public confusion with one’s existing brands, which will lead to the impairment for brand differentiation, the tarnish of enterprise brand reputation, and even as negative as losing potential customers. It would be the same for users who intend to look for reliable goods or service providers from the internet.
(The data comes from quarterly Domain Name Industry Brief from Verisign)
(The data comes from China’s Statistical Report on Internet Development from CNNIC)
When a company realizes that its brand name, same or similar, has been squatted as a domain name by someone else, the possible remedies include bringing the case to the court for a civil lawsuit, negotiating with the registrant for domain name transfer with uncertain cost, and initiating the domain name arbitration procedure. Among these, it seems the Domain Name arbitration would be an efficient consideration in turns of the complexity of the procedure, the time investment, and unexpected monetary cost.
According to paragraph 4 of UDRP, the arbitration of domain name shall meet all of the following three requirements:
(a) the subject domain name is identical or confusingly like a trademark or service mark in which the complainant has rights to; and
(b) the owner of the subject has no rights or legitimate interests in respect of the domain name; and
(c) the subject domain name has been registered and is being used in bad faith.
Generally, the complainant tends to file a domain name arbitration using registered trademark rights as the basis of the rights. But trademark registration needs generally to go through a long examination period, which could take up to years to obtain the final registration if entering the review and adjudication program for CNIPA’s refusal or opposition by others. Unlike trademarks, domain name registration adopts the principle of “first apply, first register”, which is independent of each other and does not include carrying out any substantive examination on whether the domain name submitted by the applicant violates the rights of third-party. Because of that, domain name squatters would apply for a domain name like others’ famous brands, and the simple registration procedure results in the Domain Name Registration Date being earlier than other’s trademark registration. In such a case, if the complaint initiates a domain name arbitration under the basis of the rights of the trademark which is applied first, but registered later than the disputed domain name, can it be supported and meet the definition of the same or similar trademark stated in point (a) of above-mentioned requirements?
In view of the above questions, the author launched a search and found the following cases:
- Case 1 — Unicareer（CaseNo. DAU2019-0001）
|Case Overview||The disputed domain address uses “Unicareer” in its domain field, engages in the same business as Unicareer, and directs some secondary links to the complainant’s official web site, implying that it has some association with Unicareer.
Unicareer lacked valid registered trademarks worldwide before the disputed domain name was registered, but it has been actively using “Unicareer” since its establishment in 2014. It submitted a large amount of evidence including the use of “Unicareer” as the business name and its frequent use in various activities and reports.
In the end, the panel determined that the complainant had a valid trademark right for the unregistered trademark.
|Decision||The panel determined that the complainant has a valid trademark right to the unregistered mark “Unicareer”.|
- Case 2 — cougarlife.com.au（Case No. DAU2011-0001）
|Case Overview||The complainant, Avid Life Media, Inc., is the parent company of Cougar Life Inc., the owner of the Canadian registered trademark “Cougar Life”. The complainant alleges that it enjoys the registered Trademark Right of “Cougar Life”, which is under its subsidiary company, Cougar Life Inc., and claims that the use of “cougarlife” in the domain name field of the disputed domain name “cougarlife.com.au” has constituted confusion. In addition, the secondary link of this domain name is directed to the complainant’s official website, which also proves that the complainant is in bad faith.|
|Decision||The panel finds that the complainant has not the exclusive right to registered trademark of “COUGAR LIFE” but does have a common law right to the trademark. The disputed domain name is identical or confusingly like a trademark in which the Complainant has rights to, which meets the first element in paragraph 4(a) of UDRP.|
In the above two cases, neither of the complainants had registered trademarks prior to the registration of the domain name in question, but the panel determined in its final decision that the complainants had prior legal rights with the trademark and that they complied with paragraph 4(a) of UDRP. Thus, it can be seen that the Domain Name Arbitration based on trademark which is applied first, but registered later than the disputed domain name could gain the panel’s support along with sufficient evidence.
Please refer to the Second Part of this article, soon to follow, for further detailed analysis and summary.