Fri 04 September 2020
By Jayne He
With the speedy development of e-commerce and the technology in the past decades, a domain name has become a significant asset of many businesses or individuals. Meanwhile, there is an increasing number of domain names disputes.
UNSW Law’s China International Business and Economic Law (CIBEL) Centre member Associate Professor Kun Fan presented at a webinar hosted by the Hong Kong International Arbitration Centre (HKIAC) on “Challenging A Domain Name: The ‘Identical or Confusingly Similar’ Requirement” on 17 August 2020 (video recording available here).
In her presentation, Associate Professor Fan explained that to challenge a domain name, the first element functions primarily as a standing requirement or threshold test. Essentially, there are two parts to this inquiry, namely whether the Complainant has demonstrated that it has prior rights; and if so, the second stage of inquiry requires a visual, aural and conceptual comparison of the disputed domain name to the proven prior rights to determine if it is identical or confusingly similar.
Associate Professor Fan illustrated the different definition of “prior rights” under UDRP, CNDRP and HKDRP rules, and gave some examples of the prior rights that are covered, such as trademark, natural persons (NAF, FA1908001859584, Escobar, Inc. v. Neil Okrent / Ivan Munguia, pabloescobar.com), company name, unregistered trademark.
Under UDRP, to establish unregistered or common law trademark rights, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services (WIPO Jurisprudential Overview 3.0). Under CNDRP, the matter is more controversial. She believes that whether unregistered trademark or prior registered domain name constitutes civil rights under Art 8 of CNDRP depends on if such mark or domain name has received significant recognition and influence in China because of commercial use and advertisement. If the marks are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness.
For instance, in the case of Chapter 4 Corp. v. 林建河，Supreme.com.cn, HKIAC DCN-1900893 (in which Associate Professor Fan acted as presiding panellist), the majority decided that the transfer should constitute a new registration and therefore it is not time barred. On the first element, the panel unanimously decided that the civil rights and interests under Article 8 of CNDRP is not limited to trademarks registered in China, but also include other civil rights protected under Chinese law. The panellist considered that even though Supreme is a generic term, through the complainant’s significant investments it has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. The fact that the respondent is shown to have been targeting the complainant’s mark (by way of trademark squatting) also supported the complainant’s assertion that its mark has achieved significance as a source identifier (for a comment, see IP TWINS, “China: acquisition of domain name, limitation period and admissibility of the complaint under the China dispute resolution procedure”).
She further explained that under which situation panellists find the threshold has been met, for example where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see 上海聚力传媒技术有限公司 v. Domain Admin, Whois Privacy Corp, Pptiyu.com, ADNDRC HK-1701027), and misspelling or typosquatting are generally considered to be confusingly similar to the relevant mark for purposes of the first element (see Twitter, Inc. v. Ahmet Ozkan，twıtter.com，WIPO D2014-0469); under which situation panellists find the threshold has not been met, such as the use of generic or descriptive terms (see Alibaba Group Holding Ltd v. Haitao Wang, haitao.com, ADNDRC HK-1300498) and the use of acronyms (see Sony Computer Entertainment Inc v. (1) Fortune Success Trading Limited; (2) Innovative Polymer Solutions Limited and (3) Rainbow International Industrial Limited, ps.com.hk, HKIAC DN-0300008)
Associate Professor Fan suggested that “in a globalised environment, it is strongly advised not to choose a trademark that could be considered generic or descriptive, otherwise it may be difficult for trademark owners to exclude the registration of third parties. Owners of weak trademarks could either change the brand name, or proactively securing the domain name portfolio, to register as many top-level domains as possible”.
Apart from her study in arbitration, Associate Professor Fan is also a domain name panellist for ADNDRC and HKIAC, and has rendered over 20 domain names decisions as sole panellist and presiding panellist, including ibm.cn (HKIAC Decision DCN-1800797), haitao.com (ADNDRC Decision HK-1300498), supreme.com.cn (HKIAC Decision DCN-1900893), amazoncloud.cn (HKIAC Decision DCN-1200504), shanghai-disneyland.com.cn (HKIAC Decision DCN-1100445), enfamil.net.cn (HKIAC Decision DCN-1300556), renzhongren.com (ADNDRC Decision HK-1701010), tommeetippee.com.cn (HKIAC Decision DCN‐1200475), finelycup.net (ADNDRC Decision HK-2001372), fanghuichuntang.com (ADNDRC Decision HK-2001359) .
The workshop is one of a workshop series hosted by the HKIAC. Recording of the workshop is available online upon request. Other experts in this workshop includes HKIAC’s Secretary-General Ms. Sarah Grimmer and Prince’s Chambers barrister Mr. Sebastian Hughes.