New Rules for Resolving Chinese Domain Name Disputes -
A Comparative Analysis
Appendix
This English translation of 'the
Rules' is taken from an article published by the 'China, Law &
Practice', Journal, Vol 14, No 10, (CLP [2000] No 7, ISSN
1012-6724), Asia Law & Practice, Hong Kong, December
2000/January 2001 and is reproduced here with their kind
permission.
Author's
note: Please note that the
translation is not an 'official translation' of the Rules. In
China, there is no 'official' English translation for laws and
regulations. The article is based on the Chinese text and my
translation of the provisions is not identical in wording, but
similar in meaning, to the translation.
Resolution of Disputes Concerning
Chinese-Language Domain Names Procedures (Trial Implementation)
[5600 / 00.11.01(1)].
(Promulgated by the China Internet
Network Information Center on November 1 2000 and effective as of
30 days after promulgation.)
Article 1: These Procedures
have been formulated in accordance with relevant Chinese laws,
administrative regulations and policies, and with reference to the
methods and related rules of the international community concerning
the resolution of domain name disputes, in order to resolve
disputes arising in the course of registration and use of
Chinese-language domain names.
Article
2 : These Procedures
shall apply to the resolution of disputes concerning conflicts
between Chinese-language domain names and those trademarks that are
protected by Chinese law, provided that the following conditions
are met.
( 1 ) The domain names
complained against shall be limited to Chinese-language domain
names that have been selected by the domain name applicants
themselves and whose administration and maintenance is the
responsibility of the China Internet Network Information
Center.
( 2 ) Unless the subject matter
of the request for protection has been recognized by the relevant
authorities as a well known trademark, domain name dispute
resolution authorities shall no longer accept a domain name dispute
two years from the entry into effect hereof if the domain name was
registered before the entry into effect hereof, and two years from
the registration of the domain name if the domain name was
registered after the entry into effect hereof.
(3) The only authorities in charge of the implementation
hereof shall be Chinese-language domain dispute resolution
institutions recognized and authorized by CNNIC, and these
Procedures shall only be binding on the parties to a relevant
dispute and on Chinese-language domain. name registration service
institutions.
(4) Domain name dispute resolution institutions shall
only accept disputes in which the complainant is an owner of
trademark rights and the respondent is the owner of the domain
name. If a domain name owner has an objection to the use of a
trademark, he shall seek a resolution through other
channels.
Article 3: Chinese-language
domain dispute resolution institutions ("Dispute Resolution
Institutions") are non-governmental institutions which, based
on their recognition and authorization by CNNIC, are charged with
the resolution of Chinese-language domain name disputes pursuant to
these Procedures. Dispute Resolution Institutions shall resolve
domain name disputes based on the principles of independence,
impartiality, expeditiousness and convenience and strictly abide by
each provision on the resolution of Chinese-language domain name
disputes hereof. Dispute Resolution Institutions shall formulate
detailed procedural rules, which shall be published for
implementation after approval by CNNIC, in order to ensure that
each of the rules hereof is effectively implemented.
Article 4: Dispute Resolution
Institutions shall implement a system whereby panels of experts are
charged with the resolution of disputes. The experts available for
selection by the parties to a dispute shall have full mastery of
the specialized knowledge in the fields of networking, intellectual
property and law, possess a high sense of professional ethics and
be capable of rendering independent and unbiased judgments in
domain name disputes. Lists of such experts shall be drawn up and
widely published online by the Dispute Resolution
Institutions.
Article 5: The award rendered
by a Dispute Resolution Institution may only change the status of
the registered domain name itself and may not involve any other
remedy or measure. The award will unconditionally conform with
judgments that were rendered by competent judicial authorities or
arbitration institutions and that have become legally
effective.
Article 6: Any owner of
trademark rights who considers a registered domain name to infringe
upon his trademark rights has the right to file a complaint with a
Dispute Resolution Institution and petition the Dispute Resolution
Institution to render an award in accordance herewith, in order to
protect and realize his rights.
Article 7: Support of a
complaint against a registered domain name is subject to the
following conditions precedent:
(1) the complainant enjoys trademark rights protected by
law;
(2) the domain name against which the complaint has been
filed is identical to the trademark or sufficiently similar to
cause confusion between the two;
(3) the domain name owner does not have trademark
rights, or any other legally protected rights or interests, in such
domain name or other combinations of words and/or symbols that
contain the domain name;
(4) the owner of the domain name registered and Uses the
domain name in bad faith; and
(5) the complainant's business has been or very likely
will be adversely affected by the registration and Use of such
domain name. [ Back to FN9 , Back to
FN49 ]
The complainant shall submit valid
proof attesting that each of the aforementioned conditions are
concurrently met.
If the trademark for which the
complainant is petitioning for protection has been recognized as a
well-known trademark by the relevant institution, there shall be no
need to provide separate proof for the condition stipulated in Item
(5) above.
Article
8 : Evidence
attesting to the domain name being registered and Used in bad faith
shall include but not be limited to the following:
(1) the owner of the domain name has previously offered
to sell the domain name and the price demanded unreasonably
exceeded the expenses incurred by him at the time of registration,
i.e. a profit-seeking offer;
(2) the owner's objective in registering the relevant
domain name lay not in personal Use, but rather in preventing the
owner of the trademark rights from using his own trademark or a
component thereof as a domain name;
(3) the domain name owner, with the objective of
realizing gains, deliberately fosters confusion with the mark in
which the complainant enjoys trademark rights in order to lure
Internet subscribers to, or mislead Internet subscribers into,
visiting the domain name owner's website or another online
address.
Article
9 : If the domain
name owner presents evidence of one of the circumstances set forth
below, his registration and Use of the domain name will not be
determined to be in bad faith:
(1) the domain name owner or a person closely connected
therewith has a legally protected right or interest in the mark
that constitutes the domain name;
(2) before receipt of the notice concerning the dispute,
the domain name owner had commenced legitimate Use of the domain
name, or made good faith use of a mark identical to the domain name
in its supply of goods and/or services, and consequently gained
considerable notoriety; or
(3) the complaint of the owner of the trademark rights
constitutes "reverse domain name hijacking.
Article
10 : Instances of
"reverse domain name hijacking" whereby an owner of
trademark rights uses the Chinese-language domain name dispute
resolution procedure in bad faith with the intention of
appropriating the domain name held by a legitimate domain name
owner shall include but not be limited to the circumstances set
forth below.
(1) there was and is no bad faith involved in the
registration and Use of the disputed domain name and such
registration and Use have no negative effect on the registered
trademark or the owner of rights therein or such effect constitutes
normal business competition;
(2) the complainant had registered a completely
different domain name before the registration of the domain name
complained against and fails to submit evidence that convinces the
Dispute Resolution Institution that he had legitimate reasons for
not registering the domain name at the outset;
(3) at the time the disputed domain name was registered,
the trademark for which protection is requested had not yet been
registered in China and had not been recognized as a well-known
trademark by the relevant institution.
Article
11 : For the purposes
of these Procedures, the term "Use" of a domain name
means only the making operational of a registered domain name,
whereby the domain name serves as the external code for an Internet
address and, after decoding by the network system, leads Internet
subscribers to a specific website or web page. Any use of a domain
name other than as the external code of an Internet address, such
as use as a personal identifier, a product identifier or a website
or web page identifier, etc. does not constitute Use for the
purposes of these Procedures.
Article 12: After accepting
the complaint of a complainant, the Dispute Resolution Institution
shall form an expert panel within the stipulated time and such
expert panel shall handle the relevant dispute in accordance with
the stipulated procedure.
Article 13: If a complainant
files complaints against multiple domain names owned by the same
domain name owner, the complainant and the respondent both have the
right to request that the Dispute Resolution Institution
consolidate the multiple disputed domain names into one dispute
case to be handled by the same expert panel.
Article 14: While a dispute is
pending before the expert panel, if either party believes that any
of the experts on the expert panel has a material interest in the
opposite party that could have an effect on the rendering of an
impartial award in the case, he has the right to request the
Dispute Resolution Institution to ask such expert to
withdraw.
Article
15 : During the
domain name dispute resolution process, the domain name
registration service institution shall not participate therein in
any capacity or manner other than to submit information on the
registration and Use of the domain name at the request of the
Dispute Resolution Institution.
Article 16: Provided that it
has upheld the complaint of the complainant, the result of the
action taken against the registered domain name by the Dispute
Resolution Institution shall be limited to the
following:
Article 17: Before a party
files a complaint pursuant to these Procedures, or during the
dispute resolution proceedings, or after the expert panel has
rendered its award, either party may institute an action concerning
the same dispute with the judicial authorities or, on the basis of
an agreement, submit the dispute to an arbitration institution for
arbitration. If the Dispute Resolution Institution rules in its
award to cancel the registered domain name or to transfer it to the
complainant, the domain name registration service institution will
wait 30 working days before enforcing the award. If during such
waiting period either party submits valid proof attesting that a
competent judicial authority or arbitration institution has
accepted the relevant dispute, the domain name registration service
institution will not enforce the award rendered by the Dispute
Resolution Institution and will decide its subsequent action
according to the following circumstances:
(1) if the party that instituted the judicial action or
applied for arbitration has withdrawn his action or complaint or
the relevant action or complaint has been rejected, the domain name
registration service institution shall enforce the Dispute
Resolution Institution's award;
(2) if the judicial authority or arbitration institution
has rendered a judgment or award that has become legally effective,
the domain name registration service institution shall enforce such
judgment or award;
(3) if the parties have reached an agreement upon
mediation by the judicial authority or arbitration institution that
accepted the dispute or reached a settlement agreement by
themselves, the domain name registration service institution shall
enforce such agreement.[ Back to FN53 , Back to
FN65 ]
Article 18 : A Dispute
Resolution Institution shall establish a dedicated website, receive
complaints concerning domain name disputes online and make all
materials concerning domain name dispute cases publicly available.
However, the Dispute Resolution Institution may keep confidential
materials and information that it is of the opinion could prejudice
the interests of a party if made publicly available, if it is
requested to do so by a party.
Article 19 : CNNIC has the
right to amend these Procedures in accordance with such
circumstances as the development of the Internet and the domain
name system and changes in relevant Chinese laws, administrative
regulations and policies, etc. The amended Procedures will be
published on the website and be implemented 30 days after the date
of publication. The new Procedures will not apply to domain name
disputes that had been submitted to a Dispute Resolution
Institution prior to the amendment of these Procedures.The amended
Procedures will automatically become a part of existing domain name
registration agreements. If a domain name owner does not agree to
be bound by the Dispute Resolution Procedures or an amended version
thereof, he shall notify the domain name registration service
institution in a timely manner. The domain name registration
service institution will continue the domain name services for the
domain name owner for 30 days after the receipt of such
notification and cancel the relevant domain name after the passage
of the 30 days.If a domain name is assigned, the assignee shall, as
the owner of the domain name, unconditionally accept all the terms
of the existing agreement between the domain name assignor and the
domain name registration service institution.
Article 20 : CNNIC is in
charge of interpreting these Procedures.
Article 21 : These Procedures
shall be implemented 30 days after the promulgation
hereof.
Copyright - 'China Law &
Practice', December 2000/January 2001.
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