Soo, 'Domain Names for the Asian Markets'

Introduction

Internet usage across Asia is escalating again. Statistics show that, with uptake of broadband continuing, the population of Internet users in Asia at 23^rd July 2005 had grown to 56.4% of the total internet population in the world(3). The use growth in Asia is at 183.2%, which is around 23% more than that in the rest of the world collectively; the Internet penetration in Asia, i.e. percentage of overall population using internet, is at 8.9% and this is about half of that of the world overall.

With such an extent of growth in the Internet, all indicators no doubt point to a world of opportunity unleashed for local businesses and worldwide traders in Asia. To the broadening and expanding local and international markets in Asia, the Internet is beyond doubt an attractive and, indeed, indispensable business development and promotion tool. This applies equally to foreign corporations aiming to explore outside their home countries and Asian entities seeking to establish their positions locally and internationally. Thus, whether fo local or foreign corporations, the commercial values of domain names in Asia are of increasing importance as business identifiers in current times of exponential growth of trade activities and large-scale economic development in various regions.

Domain names are the human-friendly form of Internet addresses. In many ways, the domain name system has always functioned globally and it serves to facilitate navigation of the Internet by users through mapping the user-friendly domain name to its corresponding numeric Internet Protocol Number. A domain name registration, whether in a generic top-level domain (gTLD) or a country code top-level domain (ccTLD), provides a global presence which ensures that the corresponding online address is accessible anywhere from the world. As such, with the Internet becoming the nerve system of the global economy, domain names acquire an importance status as virtual identities of corporations on the Internet in the ever enlarging global market. All of us go to the Internet and become increasingly connected. The mode of international trade has been changed.

In gist, Asian presence is the norm for international businesses and domain name serves as the essential identifier for their marketing portfolios.

Features and Nature of UDRP

With a view to easing the tension between domain names and intellectual property rights, the UDRP seeks to resolve those policy questions that have new dimensions consequential upon intersection of the global, multipurpose medium of the Internet with existing legal systems designed for the physical, territorial world.

The prime goal of the UDRP is to provide a dispute resolution policy under which a uniform administrative dispute resolution procedure is made available for domain name disputes in all gTLDs. Those generic top level domains to which the UDRP applies include .com, .net and .org, as well as a number of more recently introduced gTLDs such as .biz, .info, .name and .pro and the other three new gTLDs aero, .coop, and .museum, which are sponsored. As of July 2005, there are also over 40 country-code top level domains, ccTLDs, that have adopted it on a voluntary basis, such as .ph for Philippines and .tv for Tuvalu. The design of the UDRP process is targeted towards cases of bad faith, abusive registration of domain names that violate trademark rights. These cases are more commonly known as “cybersquatting”. This is different from the so-called domain hijacking, which refers to the wrongful taking of control of a domain name from the rightful name owner, usually resulted from flaws in registration and related processes, failure to comply with the transfer policy, and poor administration of domain names by registrars, resellers and registrants and occasionally involving fraud, misrepresentation and impersonation of registrants. As noted in paragraph 4.1 of the report from the ICANN Security and Stability Advisory Committee(SSAC), entitled “Domain name Hijacking: Incidents, Threats, Risks and Remedial Actions” dated 12 July 2005, the UDRP is unable to provide an immediate fix to cases of such interrupted service or suspected hijacking.

The exact legal nature of the UDRP is not easy to define. It is not arbitration proceedings in common usage; it has no binding effect other than upon the registration authorities; it does not prejudice the outcome of any subsequent court proceedings. It describes itself as a mandatory administrative proceeding in Paragraph 4(a) of the UDRP. In contrast, the Domain Name Dispute Resolution Policy of the Hong Kong Domain Name Registration Company Limited for .hk domain names provides dispute resolution via mandatory arbitration proceeding. (See, in particular, Paragraph 4 of the HKDNR Domain Name Dispute Resolution Policy, available at http://www.hkiac.org/.) It is nothing much more than contractual provisions incorporated by reference into the registration agreement between the registrars and the domain name registrants. Yet, the UDRP process is designed to be quick, efficient, cost-effective and conducted fully, if not largely, on-line. It provides an impartial assessment of the factual circumstances of a case in order to determine the appropriate outcome of a dispute. Decisions under it are primarily limited to orders for the cancellation or transfer of domain name registrations and will be observed and enforced by registration authorities under the dispute resolution policy. The conduct of the proceedings is intended to be all online and there is normally no in-person hearing, whether by way of teleconference, videoconference, web conference or otherwise. The panel is also conferred with a discretion as to whether to proceed on with the UDRP proceedings when court proceedings are initiated before or during the UDRP proceedings (See Paragraph 18 of the Rules for Uniform Domain Name Dispute Resolution Policy).

As stated in the case of Commonwealth Hotels Inc. v. CCD Internet (AF-00771 (eResolution, 2001), the purpose of the UDRP is:

“The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as "cybersquatting" or "cyberpiracy". The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. This reflects a cautious approach to a novel form of Internet dispute resolution and the balancing of a wide range of perspectives regarding the regulation of Internet conduct.”(4)

To be successful, the complainant needs to establish the 3 elements respectively set out in Paragraph 4(a) (i) to (iii) of the UDRP. It is expressly stipulated that the complainant bears the burden of proof of all these 3 elements. First, the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. This is identical to that that is required under Paragraph 5.2 of the MYNIC's (.my) Domain Name Dispute Resolution Policy ("MYDRP") prepared by the Malaysian Network Information Centre (MYNIC). It should be noted that identifiers other than trademarks or service marks, such as international non-proprietary names for pharmaceutical substances, names and acronyms of international intergovernmental organizations, personal names, geographical identifiers and trade names used by enterprises to identify themselves, have been examined in the 2001 Second WIPO Internet Domain Name Process, the report of which is available at http://arbiter.wipo.int/processes/process2/report/index.html. Secondly, the respondent have no rights or legitimate interests in respect of the disputed domain name. Non-exclusive guidance to circumstances demonstrating the existence of rights and legitimate interests over the disputed domain name on the part of the respondent is provided in Paragraph 4(c) of the UDRP. In the MYDRP, this element is not included as a necessary element to be established by the complainant. By Paragraph 7 of the MYDRP this, in gist, is reduced to a matter of defence against the element of bad faith. Thirdly, the disputed domain name has been registered and is being used in bad faith. Again, non-exclusive guidance to circumstances establishing bad faith registration and use on the part of the respondent is given in Paragraph 4(b) of the UDRP. In the MYDRP, as in other ccTLD policies such as the CNDRP, only bad faith registration or bad faith use of the disputed domain name is needed to be established

The actual proceedings of the UDRP are governed by two set of rules; the Rules for Uniform Domain Name Dispute Resolution Policy (“the UDRP Rules”: See http://www.icann.org/udrp/udrp-rules-24oct99.htm), that are of universal application to all disputes under the UDRP, and the supplemental rules(5) of individual approved dispute resolution service provider(6), such as the Asian Domain Name Dispute Resolution Centre(7) (“the ADNDRC”), that are applicable to disputes administered by the concerned provider.

Implications From Asian Cases On UDRP Operation

As its name suggests, the UDRP is designed for and should be of uniform application across geographical regions or nationality of participants. This is an essential building block for the UDRP system in order for it to operate in a fair, effective and predictable manner for all involved. Yet, the UDRP does not operate on a strict doctrine of precedent and there is no appellant body to secure uniformity. Given the fact that panelists and parties come from a multitude of jurisdictions, inconsistencies of outcome should nonetheless be understood in the context that genuine differences of opinion may be unavoidable on particular issues. Having said that, predictability remains a key element of dispute resolution systems. Based on the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, published in March 2005 and available at http://arbiter.wipo.int/domains/search/overview/index.html, the consensus view appears to be that panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations, although there is no guarantee that this will in fact happen. Indeed, the decisions of panels on various essential elements of the UDRP process do vary. This perhaps triggers the need and the idea for WIPO to prepare and disseminate in early 2005 an informal and non-binding overview of panel decisions, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the WIPO Overview”), for guiding issues arising in the UDRP process from time to time. The overview is in the format of a list of questions, setting out the consensus view, or majority view and minority view, or view 1 and view 2, to each of the questions, as derived from over 100 decisions from over 80 UDRP panellists. The WIPO Overview is created because of the need to identify, as much as possible, consensus among UDRP decisions so as to maximize the consistency of the UDRP system.

Among the issues with a spectrum of views, three of them are of features that arise more often in practice in relation to Asian-related domain names. Firstly, the language of the mark and the disputed domain name may differ; secondly, Asian geographic qualifiers or generic nouns are commonly added to the mark to form the disputed domain name; thirdly, reliance is from time to time made upon the common law rights of the mark.

To see how the UDRP is put into practice on such circumstances, there is no better way than reviewing the selected recent cases.

Languages of Domain Name and Mark

The issue of language may have an effect the outcome of the dispute. This may appear when the mark and the disputed domain name are in different languages or the disputed domain name is a translation or transliteration of words from another language. This issue mainly corresponds to the requisite rights of the complainant in the first element although this can also affect findings as to the second and third elements under the UDRP. (See, for example, the case of Jardine Motors Group Holdings Limited v. Zung Fu Kuen, D2004-0168 (WIPO, 2004), concerning the domain name <zungfu.com>.)

It should be noted that there is no definite test of confusing similarity to be applied under the UDRP. Panels have employed principles from United States trademark law, which applies a ‘likelihood of confusion’ test to determine trademark infringement. (See Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol D2000-0996 (WIPO, 2000) and Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico D2000-0477 (WIPO, 2000).) In the United States case of AMF v. Sleekcraft Boats 599 F.2d 341 (9^th Circ. 1979), the Court of Appeals for the Ninth Circuit set out eight factors to be weighed on the question of likelihood of confusion between trademarks, as follows: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines. It is however to be noted that, in applying the UDRP, the test is usually confined to an assessment of the disputed domain name as against the trademark or service mark, since the question whether there is confusing similarity is determined as to whether confusion could exist against any type of goods or service, as there is no classification of goods in relation to use of a domain name as in cases under trademark law.

As noted in the WIPO Overview, the location of the registered trademark and service mark is generally quite irrelevant when deciding rights in a mark under the UDRP. (See, for example, Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, D2003-0661 (WIPO, 2003). The confusion in issue is focused on the so-called “initial interest confusion” that is a unique feature of the Internet. Hence, the test for confusing similarity should be a comparison between the mark in issue and the domain name to determine the likelihood of confusion. This requirement under the UDRP will acquire an added delicacy when the challenge involves domain names and trademarks that are alleged to conflict but are registered in different languages or scripts. For instance, if a trademark is registered and protected only in English and a translation or transliteration of it is subsequently registered as a domain name, the trademark owner may not succeed in an action under the UDRP, unless the transliterated or translated version of the trademark is found to be identical or confusingly similar to the trademark registered as a domain name. An example of this can be seen in the case of <hkdongzhi.com> (Kabushiki Kaisha Toshiba D/B/A Toshiba Corporation v. Cixi Jiasheng Electrical Appliance Co. Ltd. [email protected], D2003-0460 (WIPO, 2003)). In this case, the complainant had rights over the mark of “TOSHIBA” and the Chinese mark of “东芝”. The latter part of the disputed domain name, i.e. “dongzhi”, was the Latin script transliteration the mark of “东芝” in Chinese phonetically. In finding in favour of the complainant, the panel accepted that the disputed domain name was confusingly similar to the mark of which the complainant had rights. This, as found by the panel, was reinforced by adding of the prefix “hk” to “dongzhi” which was to signify its connection with Hong Kong. As noted in AXA China Region Ltd. v. Kannet Ltd., D2000-1377 (WIPO, 2000), common geographic qualifiers or generic nouns could rarely be relied upon to differentiate the mark if the other elements of the domain name comprised a mark or marks in which the complainant had rights. It should be observed that “dongzhi” is not the only and definite phonetic translation or transliteration for the Chinese mark of “东芝”. Further, different areas in China speak different dialects. A possible form of that in Hong Kong may also appear as “tunggi”. In deciding the likelihood of confusion, how should the panel approach the matter?

Such a situation occurs in the case concerning the disputed domain names of <essocn.com>, <cn-esso.com>, <aiscocn.com> and <cn-aiso.com> (See ExxonMobil Corporation v. Cixi Fei Chi Electrical Appliance Co. Ltd., HK-0300026 (ADNDRC, 2003)). The mark relied on by the complainant was the worldwide known “esso” mark, which has also been registered in Chinese as “埃索” in PRC. The disputes about the two “esso” domain names were straightforward. As regards the other two “aiso” domain names, the complainant contended that the phonetic English translation of “埃索” was “aiso”; the panel was of the view that the exact phonetic translation should rather be “aisuo”. On this basis, the panel formed the view that even if an internet user searched for a phonetic translation of the Chinese “埃索” mark, “aisuo” would be used rather than “aiso”. In particular, the panel pointed out that

“…similarity shall be analyzed pointing out the global appreciation of the visual, aural or conceptual similarity of the marks and domain names in question, and must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.”

In rejecting the complaints as regards the two “aiso” domain names, the panel said further that “…by looking in the internet, this Panel finds it difficult to conclude that such people search the trademark in question under a name that only sounds like the Chinese character equivalent”. Thus, what seems to be important is the perception of the mark in the mind of the average internet users. It should also be highlighted in this case that the complainant was with rights over both the “esso” mark and the “埃索” mark and that the panel’s decision in this regard was based on its finding that

“…the familiarity of the Chinese speaking people with the “Esso” trademark would be primarily from visually being in contact with signs and the “Esso” name or the Chinese character equivalent in i.e. petrol stations or other places where products displaying the “Esso” trademark are sold”.

Geographic Description

It is not uncommon for domain names to include a geographic description and this is indeed a common method for specifying the location of business provided under the trademark. It may also be noted that common geographic qualifiers or generic nouns could rarely be relied upon to differentiate the mark if the other elements of the domain name comprised a mark or marks in which the complainant had rights. In the case of ZIH Corp. v. Sherry CN-0400031 (ADNDRC, 2004), the panel decided that the disputed domain names <zebrajapan.com> and <zebrakorea.com> were confusingly similar to the “zebra” mark of the complainant. In this case, the respondent defaulted in response and the disputed domain names were transferred. A similar decision in favour the complainant was reached in the case concerning the disputed domain name <zebrachina.com> (ZIH Corp. v. argox computer, CN-0300024 (ADNDRC, 2003)). The defence put forward was, in gist, not much more than a bare assertion that the animal word “zebra” was one of generic nature for daily uses. The panel found that the Respondent had not proved that it carried out any business or owned any entity using the name “zebra”. The disputed domain name was therefore transferred.

Notwithstanding the above, the matter may become complicated when respondent put forward some evidence to justify its rights or legitimate interests over the use of a mark of generic nature. The mere adding of a geographic qualifiers or generic nouns may sometime underpin the basis for such justifications. This can be illustrated in the recent case of Mars, Incorporated v. xinruchen (CN-0400038 (ADNDRC, 2005)) regarding <mars-china.com>. The respondent said, initially, that there was an agency licence in respect of the complainant’s mark “MARS”. Such a contention was later withdrawn and the panel found that the respondent did not have legitimate interests or rights over the mark. The disputed domain name was linked to one electronic company in Guangzhou and the Chinese equivalent of “Planet Mars”, ie “火星” in Chinese, was used together in the content of the respondent’s website. The panel was of the view that this was sufficient in indicating to internet users that “MARS” there meant the planet, nor the complainant’s mark. On this basis, the panel found that there was no bad faith registration and use. What is interesting about this case is that the website in issue did offer, in relation to services for burning CD-R, businesses overlapping with some of the registered categories of products and services of the complainant’s mark. Without the use of the two Chinese words to qualify the China-related domain name in dispute, it might well be the case that the outcome of the decision would not be the same.

In the case of China Daily v. Yang Rui (CN-0200016 (ADNDRC, 2003)), the domain name in dispute was <chinadaily.com>.(8) The respondent’s address was in the United States. The complainant asserted rights over the “China Daily” mark. The panel considered the respondent’s defence that, inter alia, the respondent was of ethnic Chinese origin and that the combination of “china” with the word “daily” was not distinctive; still the panel found that the disputed domain name was confusingly similar to the complainant’s mark. However, in relation to the issue of bad faith and the respondent’s rights and legitimate interests, the panel accepted the respondent’s assertion that

“…the name of the website was chosen to reflect the Respondent’s ethnic origins, and that the choice of “china” and daily” as a combination of words was legitimate for the Respondent’s purpose of providing a website containing stock market commentary and updated analysis”.

As such, the panel accepted that the respondent had fulfilled the grounds set out in Paragraph 4(c)(i) which states that

“[this ground will be made out if]…before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name …[were] in connection with a bona fide offering of goods or services.”

and 4(c)(iii) of the UDRP which states that

[this ground will be made out if]…[the respondent’ is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark … at issue”

and rejected the complaint. Hence, it seems that the ethnic origin of the respondent may be a factor to support the finding of rights or legitimate interests, or absence of bad faith.

Common Law Rights

The location of the parties and the marks are not uncommonly taken into account in deciding the issue of bad faith registration and use on the part of the respondent. In the case of Telstra Corporation Limited v. Nuclear Marshmallows (D2000-0003 (WIPO, 2000)), the panel, in deciding bad faith use and registration on the part of the respondent, took into account as one of the facts that the respondent registered the domain name with knowledge of the complainant’s right. In Wal-Mart Stores, Inc. v. Thomson Hayner d/b/s Wireless Revolution d/b/a Latin Technologies (DAS2002-0001 (WIPO, 2002)), the complainant’s mark was a well-known mark in the country where the respondent was situated and the panel in that case accordingly found that the respondent was with knowledge of the complainant’s mark when it registered the domain name, i.e. acting in bad faith.

Where the parties reside in distinct countries, the test for proving the strength of the complainant’s mark in the respondent’s location or surrounding becomes a vital and high one. An illustration of this is the case of Craig Media v. Kim Hyungho ( D2004-0091 (WIPO, 2004)). In this case, the disputed domain name was <achannel.com> and the complainant was with rights over the mark “A-Channel” and “A Channel”, well-known in Canada. The respondent, who was in Korea, denied knowledge over the complainant’s marks. In finding that the complainant had failed to prove bad faith on the part of the respondent, the panel dismissed the complaint and observed that “[t]he fact that the Complainant and it’s A-Channel is very well known in Canada does not mean that it is well known in Korea”. Obviously, this issue is even of more importance when the complainant’s mark is one with merely common law rights. As noted in Anson Enterprises, L.C. v. Sharon McGall ( D2001-083 (WIPO, 2001)), evidence sufficient to justify a finding of a common law trademark includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.

In Pintas Consulting Group Sdn Bhd v. hong on ( HK-05000066 (ADNDRC, 2005)), the respondent’s address was in Pennsylvania and the complainant was a Malaysia company and the holder of the only “Sporting Bookie licence” from the Malaysia Ministry of Finance in late 1980s and asserted common law rights over the “ASCOTSPORTS” mark. The domain name in dispute was <ascotsports.com>. The complainant asserted that it had extensive use and promotion of the “ASCOTSPORTS” brand and mark in daily newspapers since 1988 and that the respondent was with prior knowledge of the complainant’s existence and reputation. The respondent made no submissions. Despite the assertions of the complainant, the only pieces of evidence annexed in support was advertisements in a newspapers in 1990 for “ASCOTSPORTS”, copies of licence application in the Isle of Man and some newspaper clippings in late 1980s about the complainant’s outlets. The panel found that the complainant had failed to prove its common law mark and observed that the parties lived in different countries and there was no evidence to show that a resident in Pennsylvania would know about the complainant’s activities in either Malaysia or the Isle of Man. On this finding alone, the complaint was rejected.

Given the above, in order to rely a common law mark under the UDRP, care is needed to organise and present evidence to establish a reputation and goodwill to support some sort of misrepresentation one’s goods or services as another’s, akin to the situation of in respect of the tort of passing-off (See BAA plc. v. Larkin, D2004-555 (WIPO, 2004) and Luis Cobos v. West North, D2004-0182 (WIPO, 2004).). A successful example is the case of BroadcastAmerica.com v. Quo (DTV2000-0001 (WIPO, 2000)) concerning the disputed domain name <broadcastamerica.tv> and the complainant relied on its common law mark of “BOARDCASTAMERICA.COM”. The complainant offered internet broadcast services to users worldwide with more than 500 individual radio stations and 67 television stations in the United States and 9 other countries employing the complainant as their exclusive internet broadcast outlet. The evidence of extensive use of that mark to identify complainant as the source of broadcast services over the Internet and the evidence that there was wide recognition among Internet users of the complainant as the source of broadcast services was described by the panel as substantial to support the finding of a common law service mark despite the absence of a registered trademark.

Checklist for Salient Factors

In respect of the above three areas, from the review of recent cases, certain factors salient to those involved in domain name disputes under UDRP should be alerted to, particularly in dealing with Asian-related domain names, can be highlighted. These may conveniently be set out in the format of a list of question as follows:-

(a) Languages of mark and domain name

· Whether the trademark or service mark is in different language from that of the disputed domain name

· Whether the trademark or service mark is an exact translation or transliteration of the disputed domain name, phonetically or otherwise, or vice versa, under the language in issue

· Whether geographic qualifier or generic noun added to form the domain name corresponds to the language of the trademark or service mark or the disputed domain name

· Whether the disputed domain name is confusingly similar to the trademark or service mark to users of the language of the said domain name

(b) Geographic description

· Whether geographic description is added to generic word(s) to form the disputed domain name

· Whether geographic description added corresponds to the ethic or location of the respondent

· Whether there is any evidence, including the content of the website, that supports some sort of rights or legitimate interests over, or bona fide registration or use of, the disputed domain name on the part of the respondent, taking into account of the geographic description added

· Whether the parties are in the same countries

· Whether the mark is with common law rights strength at the respondent’s country

· Whether the evidence in support of the common law rights of the mark is sufficient

Conclusion

With the recent exponential growth of economic activities and large-scale commercial growth in various Asian countries and places, domain names are powerful and effective business identifiers for the Asian market and, as such, their commercial values must not be underestimated. The operation of the UDRP, together with the rationale and practice of the uniform process of domain name disputes could be highlights a number of issue from an Asian perspective. As such, it would be prudent and necessary for those involved in such disputes to go through a checklist of considerations so that salient features in protecting domain names under the UDRP regime are overlooked.

United Kingdom Journals

Domain Names for the Asian Markets

Gary Soo B.Sc.(Hong Kong), LL.B. (London), LL.M.(Peking)

Summary

Contents