Top Ten Questions Regarding Domain Name Disputes (Part II)

Website: www.haiwen-law.com

In a continuation from last month, below is the final half of my views on the 10 key substantive and procedural issues concerning the Policies for the Resolution of Domain Disputes ('the Policies') formulated by the China Internet Network Information Center (CNNIC).

6. What constitutes "unjustified interests" (?????) within the meaning of the Policies?

The Policies provide that a registration is in bad faith if the domain name holder has registered or acquired the disputed domain name for the purpose of selling, renting or otherwise transferring the domain name to obtain "unjustified interests". The Policies do not elaborate what constitutes such unjustified interests. Likewise, the Supreme People's Court also uses this term in a relevant judicial interpretation without further explanation.

A corresponding provision in the Internet Corporation for Assigned Names and Numbers' (ICANNs') Uniform Domain Name Dispute Resolution Policy (UDRP) does shed some light however. It requires proof that the domain name holder has registered or acquired the domain name "primarily for the purpose of selling, renting or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name".

7. What constitutes the multiple registration of domain names to which others have rights?

Registering domain names to which others have rights is another circumstance specified in the Policies where bad faith in domain registration or use can be found. This usually requires the showing of multiple cases (at least two) where a domain name holder has registered domain names that are identical with or similar to known trademarks. Under the Domain Name Dispute Resolution Center's (DNDRC's) practice, the registration of two domain names with different suffices (e.g., com.cn, net.cn) bearing the same identifier is not generally sufficient in proving multiple cases because registrars often offer packaged services to register domain names with the same identifier but with different suffices. What is required to prove such behaviour is evidence of a "pattern of conduct" involving similar situations where a domain name holder has registered multiple domain names involving different trademarks.

8. What constitutes "other bad faith" circumstances?

The Policies have a catchall provision regarding bad faith registration or use. This approach is consistent with that of the UDRP specifying that bad faith circumstances are not exhaustive. The Policies are, however, silent on the specific standard for determining "other circumstances" and leave this determination to the discretion of a panel on a case-by-case basis.

A typical fact pattern involves a domain name that is not actively used and the domain name holder has not taken any active steps to sell the domain name or contact the complainant. There is no consensus, however, on whether or not this constitutes bad faith. I would argue that other circumstances such as this should not be interpreted too broadly. In this context, the judicial interpretation by the Supreme People's Court seems to limit the circumstances to cases involving trademark infringement or unfair competition.

Another approach adopted by certain panelists under the UDRP is also worthy of recommendation. This approach requires the examination of all the circumstances of the case. For example, whether the complainant's trademark is well-known, whether the domain name holder has responded to the complaint, whether the domain name holder provided false identity, etc.

9. Can a panel perform independent research to reach a decision?

The majority view in the DNDRC is that a panel may not use or rely upon information that is not submitted by the parties. This does not prevent a panel visiting the website linked to the disputed domain name to obtain more information about the respondent.

A panel's independent research may gather crucial information that a complainant has neglected. The procedural rules of the DNDRC specifically provide a mechanism under which a panel is authorized to ask the parties to submit further evidence or factual explanation. This approach is favourable in the sense that it will save costs, time and energy for a trademark owner that would otherwise have been incurred in having the case re-heard by a court.

10. What type of lawsuit adjudicating a "related dispute" can a domain name holder file to block the enforcement of a DNDRC decision?

The Policies fail to provide a satisfactory answer to this question. By examining the context in which the term "related dispute" is used, it refers to a lawsuit involving "identical subject matter". This means that a lawsuit filed by a domain name holder must attempt to claim that the domain name holder has the right or interest to register or use the disputed domain name. The Policies, furthermore, imply that only a lawsuit filed by a domain name holder trying to challenge a DNDRC decision can block the enforcement of a DRDRC decision.

Unfortunately, unlike the UDRP, the current Policies allow a domain name holder to initiate a concurrent lawsuit before a decision is made. Arguably, even if a concurrent lawsuit is filed, it must state a cause of action relating to the ownership of the domain name - i.e. a claim asking for a court's verification and confirmation of the "ownership" of a disputed domain name.