Analysis on Lawsuits and Arbitration in Domain Name Dispute Settlement System in China

By Luo Yanjie

According to a news report, Apple filed arbitration in June over “iPad 3.com” in WIPO, and claimed the adjudication to grant it the domain name. So far as is known this week, Apple is said to have received the internet address, and the registration information of iPad 3.com, and has now been updated, transferred from Global Access to Kilpatrick Townsend & Stockton; the law firm entrusted by Apple.

The development and popularity of the Internet has increased the weight of domain names to the companies, especially for those engaged in the Internet industry and to them the domain name is playing the main role in propaganda with the replacement of trademark to some extent. Therefore, the domain name has been one of the main battlegrounds of the Internet or IT companies, and that thereby has brought many disputes. Due to the fact that the domain name is unified in global standard, the dispute concerning the domain name could be mainly settled in arbitrations (like Apple did in the case above, while it’s a little different from the contractual arbitration as specified below) and lawsuits. Now, we would like to introduce you how these two settlement methods applied in China:

I. Comparison between the application scope of lawsuit and arbitration

Firstly, in China, there are two types of domain name dispute arbitrations in China, one is authorized by The Internet Corporation for Assigned Names and Numbers (ICANN) and arbitrated under Rules for Uniform Domain Name Dispute Resolution Policy (the “ICANN Rules”), and it mainly focuses on the international domain name ending in “.com.” As to the domain name ended in “.cn” or the normal Internet address, China International Network Information Center (CNNIC) accordingly made Rules for Domain Name Dispute of CNNIC (the “CNNIC Rules”), and the cases could be heard by the regulation in authorized committees like CIETAC. Basically, the above two arbitrations are separated in rules and committees.

For the lawsuits, according to Interpretations on Several Issues on Law Application in Hearing Civil Disputes of Computer Domain Name Disputes by the Supreme People’s Court of China (the “Interpretation”), any lawsuits concerning the domain name, either “.cn” or “.com,” could be filed in China courts once it meets the jurisdiction rules in China Civil Procedure Law, like the plaintiff is Chinese or the tort happens in China.

II. Comparison between the arbitration and the lawsuit

In general contract disputes, the adjudication will be final and binding, and the parties involved in the arbitration could not appeal for any dissatisfaction on the substantive results, unless any mistake of procedure has occurred and thereby an application of revocation could be made. Moreover, the arbitration decision is final and enforcing, which could also be applied for mandatory enforcement by the winning party.

While in the domain name disputes, both ICANN Rules and CNNIC Rules have the following similar provisions, “During the process of dispute settlement, or after the decision of the experts, the party of complaining or being complained may file a lawsuit to the court for the same dispute. The decision made by the dispute settlement institution shall be suspended for enforcement once the complaining party submits the proof of case acceptation by the judicial organ or arbitration committee with jurisdiction on the case within 10 days after the decision.”

In view of the above, the domain name arbitration procedure shall have no legally binding effect as that from judicial procedure, and the final result shall be subject to the decisions made by the court (if any). Domain name arbitration is only functioning as a procedure for fast settlement by the domain name management institution.

III. The comparison on the substantive law application in lawsuits and arbitrations

The following two aspects shall be considered either in arbitrations, including the international and domestic, or in lawsuits: 1) could the domain name of the complained party arise any confusion to that of the complaining party; 2) is there any malicious intention of the complained party. The above factors are detailed regulated for their judgment standard in each program.

IV. The comparison on claims and enforcement afterwards on arbitrations and lawsuits

As discussed above, the decision made in the domain name arbitration is with no legal effect, and thereby the scope of the procedure shall be within the powers of the managing institutions, usually: “the amendment to the information of the disputed domain name owner”. That is to say no compensation could be achieved through the arbitration. Meanwhile in the lawsuits, as said by the judicial interpretations, “the sentence may order to stop the infringement, cancel the domain name, to order the plaintiff own the domain name as claimed; and to order compensation by the defendant once there suffered any losses by the right owner.”

Furthermore, as to the enforcement of the arbitration decision or judicial sentence afterwards, considering the decision made in the arbitration could only refer to the amendment to the owner registration, the enforcement of the effective decision will be without problems. While a different situation can be seen when it is decided in lawsuits, the judicial enforcement may face many obstacles for the “.cn” domain name managed by domestic institutions or com domain name agented by domestic institutions. Especially for those com domain names, the Chinese courts seem to have few options but to turn to the transnational aid by the international conventions. Therefore, it’s suggested filing a lawsuit in the court first, and then to take the decision as evidence to the arbitration in ICANN.

Lawyer Contacts

You Yunting

86-21-52134918

youyunting@debund.com, yytbest@gmail.com

For further information, please contact the lawyer as listed above or through the methods in our CONTACTS.

Bridge IP Law Commentary’s posts, including the comments and opinions contained herein, shall not be construed as the legal advice on any issues related. The contents are for general information purposes only. Anyone willing to quote or refer the posts to any other publications or for any other purposes, no matter there’s benefits gained or not, shall first get the written consent from Bridge IP Law Commentary and used under the discretion of us. As to the application of the reprint permission for any of our posts, please email us to the above addresses. The publication of this post or transmission of it through mail, internet or other methods does not constitute an attorney-client relationship. The views set forth here are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works.

Short Link: