Brand owners look to new dispute resolution methods to stop infringement in China

Focusing on current and future trends in trade mark rights protection and dispute resolution mechanisms in global domain name systems, the “Innovation in online trademark rights protection and new domain name strategies in China” seminar in Hong Kong on April 26, World IP Day, will feature sessions on new generic top-level domain names (gTLDs), and brand owners’ and practitioners’ views on domain name strategies in China. Two of the speakers, Dennis Cai, president of policy and compliance, Dot Trademark and Carrie Shang, ADR legal counsel, Hong Kong International Arbitration Centre (HKIAC), representing the two organisations behind the event, spoke to Asialaw about the topics that are likely to come up during the day.

Asialaw (AL): What are the main issues brand owners are dealing with in China?

Carrie Shang (CS): With the growing importance of the internet, domain name infringement has become one of the most important issues brand owners are dealing with. The Internet Corporation for Assigned Names and Numbers (ICANN) is the organisation for accrediting gTLDs, such as dot.com, dot.gov and dot.org. In 2015, ICANN set out regulations for applying for new gTLDs and non-alphabetic gTLDs, including Chinese characters, also got approved. With the growth of more and more domain names, new types of infringement have come up.

AL: How many registries are there at the moment?

Dennis Cai (DC): More than 1,930 applications were made, but around 1200 have been approved.

AL: What are some of the dispute resolution mechanisms that have arisen?

CS: Through the development of dispute resolution centres, with the HKIAC being one of Office of Asian Domain Name Dispute Resolution Centres (ADNDRC), domain name disputes can be resolved quickly and cheaply. The average period is less than 16 days and more than 90% of disputes can be resolved. Registrars must follow the Uniform Domain Name Dispute Resolution policy (UDRP) to resolve disputes. To speed up the process, the Uniform Rapid Suspension (URS) system offers a cheaper and faster way to resolve clear-cut infringement cases. With the Chinese Internet Network Information Centre (CNNIC), which governs the “.cn” domain, a different dispute resolution policy is used which puts a two year time bar on complaints.

DC: With the domain name registration being a first-come-first-served basis, policies such as having a sunrise period for trade mark holders to pre-register names that are same or similar to the trade marks, have been created to minimise disputes. But there is a need to re-think the system because the lack of verification is what is causing endless disputes. Through a certification system, third parties can be prevented from registering to offer post-registration protection to parties.

AL: What have been some of the biggest domain name disputes in China?

CS: The case of weixin.com and the action against the owners of WeChat, Tencent has been quite high profile. Tencent won in the case decided by a three member panel, but there was one dissenting and the case was appealed in the PRC court. This case was challenging because Tencent had to prove bad faith in the registration but the domain name was registered in 2000, before WeChat was launched in 2011.

Asialaw is supporting the HKIAC and Dot Trademark’s seminar “Innovation in online trademark rights protection and new domain name strategies in China” on April 26, which is also World IP Day.