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When looking into registering domain names in Asia, companies often encounter the problem that their .cn domain names in China have already been registered by someone else. Companies who are zealous about protecting their brands should consider reclaiming their .cn domains.
There are three channels for reclaiming a .cn domain name from a prior registrant: (1) negotiating and purchasing the domain name; (2) filing a civil lawsuit in China; and (3) initiating a dispute resolution action in China. This article focuses on the dispute resolution option.
China Internet Network Information Center (“CNNIC”) controls all issues related to .cn domains in China. Disputes over .cn domains are governed by the CNNIC Domain Name Dispute Resolution Policy (the “Policy”). Both domain name registrars and registrants agree to be governed by the Policy and be bound by the decision of a Dispute Resolution Service Provider (the “Provider”) after a dispute resolution proceeding.
Through a dispute resolution action, a company can request that the Provider either cancel the prior registration or transfer the prior registration to the company. According to Article 8 of the Policy, there are three elements to the company’s claim: (1) the disputed domain name is identical with or confusingly similar to the company’s trademark or trade name in which the company has civil rights or interests; (2) the registrant has no right or legitimate interest in the domain name or a major part of the domain name; and (3) the registrant has registered or is using the domain name in bad faith. It is the company’s duty to prove elements (1) and (3).
A company has a strong case for showing that it has civil rights or interests in a trademark when it has a registered trademark in mainland China. Without a Chinese trademark registration, a company can still establish rights through proof of use of its trade name in other countries.
According to Article 9 of the Policy, a company can prove the bad faith element by evidence supporting the following: (i) the purpose for registering the domain name is to sell, rent or otherwise transfer the domain name registration to the company and to obtain unjustified benefits; (ii) the registrant registered the domain name in order to prevent the company from using the name or the mark in a corresponding domain name, provided that the registrant has been engaged in a pattern of such conduct; or (iii) the registrant has registered or acquired the domain name for the purpose of damaging the company’s reputation, disrupting the company’s normal business or creating confusion with the company’s name or mark so as to mislead the public.
A dispute resolution action generally takes two and a half months from beginning to end. The process does not involve oral questioning of the parties. The decision of the Provider can be readily enforced by CNNIC through the domain name registrar.
© 2009 Sheppard Mullin Richter & Hampton LLP
