Top 10 Questions Regarding Domain Name Disputes (Part I)

The Policies do not require that a complainant has to own or acquire civil rights and interests before the registration of a domain name. This means that unregistered trademarks or potential rights may be protected as civil rights and interests if the evidence supports that the respondent is clearly aware of the complainant and it is clear that the aim of the registration was to take advantage of the goodwill of any potential rights of the complainant.

2. How do you prove confusion between a domain name and the name or identifier to which the complainant has civil rights and interests?

Unfortunately, the wording of the Policies on this important issue lack clarity in that they require both the showing of exact sameness and confusing similarity. The ideal formulation should have been identicalness or confusingly similarity to a trademark. As it now stands, if a domain name is identical with a trademark/trade name in which the complainant has rights, evidence of confusion is not required because this is presumed to exist. If a domain name is only similar to a trademark/trade name, likelihood of confusion must be shown.

3. How do you determine confusing similarity?

A test to determine the likelihood of confusion by users should be conducted by making a comparison between the trademark and the domain name in terms of sound, sight and meaning. Since visual effect of an inherently distinctive trademark (e.g., Yahoo!'s distinctive red stylized letters) is not recognized in the domain name system, any argument by the respondent on the different visual impression of the trademark should be disregarded. However, if the trademark in question is not inherently distinctive (e.g., MTV or other words of a generic or descriptive nature) because it conveys direct information about the underlying product or service, the legitimate right of the respondent to use words of this type to communicate with the public must be considered. This means that trademarks of this type are only protected in an offline world if their visual effect is distinctive in the eyes of the public in distinguishing a brand name. As such, their protection cannot be extended to the domain name system.

4. How do you prove that a respondent lacks legitimate rights and interests over a disputed domain name?

Although it is often impossible to prove a negative fact, the complainant has to satisfy its initial burden of proof to show a prima facie case that the respondent lack rights or legitimate interests. Once such a prima facie case is made, the burden of proof shifts to the respondent to demonstrate rights or legitimate interests in the domain name. As indicated in the answer to question three, the generic or descriptive nature of a domain name should make it easier for the respondent to carry this burden.

5. How can a respondent demonstrate its legitimate rights and interests in regard to a disputed domain name?

The Policies are completely silent on through what means a respondent can demonstrate its legitimate rights and interests. Reference should be made, however, to the relevant provisions of the Uniform Domain Name Dispute Resolution Policies, which include, without limitation, the following prerequisites for such demonstration: (i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, or to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.

*The remaining five questions will be addressed in the next bulletin.

By Song Huang
Website: www.haiwen-law.com