Can Trade Name Rights Be Rights Basis for Disputes over Internet Domain Names?
—A Review of Relevant Legal Precedents Established by ADNDRC

An internet domain name is symbolic for modern enterprises in the blossoming online business and E-commerce era. As an increasing number of enterprises become aware of the importance of domain name protection, cybersquatting of well-known trade names of enterprises also intensifies. By reviewing recent decisions from the Asian Domain Name Dispute Resolution Centre ("ADNDRC"), this article will explore whether a complainant in a domain name dispute is entitled to take trade name rights as the rights basis when reclaiming its generic Top-Level Domain ("gTLD").

I. ICANN and ADNDRC

The Internet Corporation for Assigned Names and Numbers ("ICANN"), as an international non-profit organization, is responsible for assigning the Internet Protocol ("IP") address and Protocol Identifier ("PI"), managing the gTLD system and the Country Code Top-Level Domain ("ccTLD") system, as well as the root server system. The Uniform Domain Name Dispute Resolution Policy ("UDRP")(1), which is formulated and implemented by ICANN, is applicable to the resolution of all the disputes over the gTLD.(2)Internationally, the domain names of .com, .net, .org, and .info are ascribed as gTLDs. If the parties concerned intend to resolve a dispute involving a gTLD through administrative procedures such as arbitration, only the UDRP and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") (3)formulated and implemented by ICANN shall govern. The dispute should only be submitted to the domain name dispute resolution organizations designated by the UDRP and the Rules.

At present, the UDRP and the Rules designate only four organizations for above resolution.These organizations are the ADNDRC, the National Arbitration Forum, the Domain Name Dispute Resolution Department of the World Intellectual Property Organization ("WIPO"), and the Domain Name Dispute Court of the Czech Republic. All of the aforementioned organizations shall be bound upon by the UDRP and the Rules when hearing a domain name dispute case. However, these entities are entitled to formulate supplementary rules to theUDRP and the Rules based upon their unique dispute resolution characteristics. Any party concerned may lodge administrative complaints with any of the four aforementioned organizations upon domain name disputes. For considerations of cost saving, higher efficiency, and the suitability of its relevant supplemental rules to Chinese enterprises, enterprises residing in China generally choose to lodge administrative complaints with the ADNDRC.

II. Is Complainant Required to Have Trademark Rights according to UDRP?

According to the UDRP, the complainant shall explain the reasons for lodging such an administrative complaint, (4)including:

• A. How the domain name in dispute is identical or deceivingly similar to the trademark or service mark in which the complainant has rights;

  B. Why the accused party (the current holder of the domain name in question) has no right to or interest in the domain name; and

  C. Why the domain name has been maliciously registered and used by the accused.

It can be concluded that the rights that a complainant based upon in said domain name dispute are the commodity trademark rights or service trademark rights. The UDRP and any of supplementary rules do not permit the complainant's rights extending to rights other than the commodity trademark rights or service trademark rights. Does this mean a complainant can lodge a domain name dispute based upon rights such as the trade name rights? And if so, can the complainant apply for invalidating the domain name registration or seek the transfer of the registered domain name from the accused for free? In its rulings, the ADNDRC did not provide consensus opinions on above issues. Meanwhile, some experts agree that the complainants can use trade name rights as the rights basis for domain name disputes.

III. Domain Name Disputes Review by ADNDRC

• A. Parker Pen Products v. Cai Yuren over "www.parker-pen.com"

  The dispute between Parker Pen Products and Cai Yuren over the domain name "www.parker-pen.com," was accepted by the ADNDRC on November 26, 2009 and was decided on June 26, 2010. In the dispute, Park Pen Products in China failed to produce evidence to certify that the registration period of the trademark in China had been renewed before the registration period had expired. The ADNDRC denied the trade name right as the basis for a prior civil right or interest and held that "[i]n accordance with Paragraph 4(a)(i) of the UDRP, only the right to the trademark or service mark can be based on to lodge a complaint about the dispute over a .com domain name. Therefore, the Complainant's prior civil rights or interests shall not be based on the Complainant's trade name rights to the mark 'PARKER'." It can be inferred that the ADNDRC interpreted the case facts within the purview of Paragraph 4(a)(i) of the UDRP and refused to extend the trademark rights to any other rights including the trade name rights, and ultimatelyrejected Parker Pen Products' Complaint of cancelling the domain name registration in question.

  B. Weight Watchers International Inc. v. Adam Jin over "www.showpoints.com"

  In the dispute over the domain name "www.showpoints.com," the Complainant Weight Watchers International Inc. claimed that its trade name rights should be taken as rights basis for other corresponding rights. Unlike in Parker, the ADNDRC has taken into account the ruling made by the China International Economic and Trade Arbitration Commission ("CIETAC") in a domain name dispute of Gea Group Aktiengesellschaft et al v. Shenzhen Malintech Industrial Co., Ltd. (Case No. CND2007000187). The Court in Gea Group Aktiengesellschaft ruled that "[t]he Complainant claims that its trade name should be protected in accordance with Article 8 of the Paris Convention for the Protection of Industrial Property ("Paris Convention"). However, the trade name must simultaneously satisfy another condition that the trade name has been used and has certain effect in the member country through advertisement or other means of publication."

  Although the experts group decided Gea Group Aktiengesellschaft in light of Paragraph 4(a)(i) of the UDRP, the experts group clearly indicated that when deciding whether the trade name shall be protected in domain name dispute, the rights basis is not strictly limited to trademark rights, and the trade name rights have been taken into consideration.

  C. Mercer (US) Inc. v. Tianjin Hao Yuan Talent Development Co., Ltd. over "www.tjmercer.com"

  The domain name dispute of Mercer (US) Inc. vs. Tianjin Hao Yuan Talent Development Co., Ltd. upon "www.tjmercer.com" was accepted by the ADNDRC on April 14, 2009 and was decided on June 22, 2009. The ADNDRC held that "[a]lthough the term 'trade name' is not defined by the existing Chinese laws, (5)China, as a member country of the Paris Convention, has the obligation to provide the same protection for the trade names that have been used in the business activities in China as the trademarks."

  In this case, although the ADNDRC supported the Complainant's claims largely based on the Complainant's rights to the registered trademark in a territory other than its registration country, it referred to the Paris Convention definition of "trade name right" and regarded it as rights basis for the domain name in question. However, the ADNDRC did not provide its own definition of the "trade name right" in its ruling or provide any guidance regarding ways to protect the trade names already used in business activities in China.

  Notably, the ADNDRC explained how to protect the "trade name rights" by referencing the ruling in Gea Group Aktiengesellschaft:

  • "A trade name, like a trademark, is a business symbol. Business symbols are legally protected by the laws of all countries either as: (1) a registered trademark or the rights to a registered trademark, after it goes through the formalities of legal registration; or (2) an unregistered famous trademark or trade name which generates goodwill for its direct or indirect use or promotion. As such, the law intends to protect the goodwill of the business symbols. In general, the law protects a business symbol which involves both circumstances."

  The ruling of Gea Group Aktiengesellschaft briefly explained the function and definition of a trade name and emphasized the value of goodwill obtained by an enterprise from its trade name. Although the ADNDRC may not reference the above interpretation in its future hearings, enterprises may take this into consideration when lodging domain name disputes with the ADNDRC based upon trade name rights.

IV. Conclusion

The ADNDRC experts vary in their opinions concerning the rights basis over domain name disputes. Some experts strictly applied provisions provided in Paragraph 4(a)(i) of the UDRP, limiting the trademark rights as the sole rights basis for domain name disputes; while other have expanded the rights basis to the trade name rights, so as to further protect the complainant's domain name rights in dispute. On the one hand, uncertainties may arise from the different opinions of the experts of the ADNDRC. On the other hand, the ADNDRC, an arbitration organization, has a relatively wide discretion in adjudicating domain name disputes.

Notes:

(1) UDRP was adopted by ICANN on August 26, 1999, and became effective on October 24, 1999.

(2) See http://www.icann.org/.

(3) The Rules was adopted by ICANN on October 24, 1999.

(4) See Paragraph 4 (a) (i) of the UDRP.

(5) The Rules of the Supreme People's Court on Issues Concerning the Trial of Civil Disputes over the Conflict between Registered Trademark or Enterprise Name with Prior Right(promulgated by the Supreme People's Court on February 28, 2008 and becoming effective as of March 1, 2008) adopted the term "enterprise name", but not the term "trade name". TheInterpretation of the Supreme People's Court on Issues Concerning the Application of Laws in the Trial of Labor Dispute Cases (II) (promulgated by the Supreme People's Court on August 14, 2006 and becoming effective as of October 1, 2006) and the Interpretation of the Supreme People's Court on Issues Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks( promulgated by the Supreme People's Court on October 12, 2002 and becoming effective as of October 16, 2002) used the term "shop name", instead of "trade name".