Legal Analysis on Conflict Between Domain and Name Right According to Chinese Law, I

By Albert Chen

In recent, one of the hot news in China, might be Mr. Zhou Libo’s taking back the network domain in his name (Zhou is the comedian star of Shanghai style small talk, a talk-show like performance in Shanghai dialect). Ms. Yue from Beijing registered “zhoulibo.com” (the “domain”) in 2007, and in September of 2011, Mr. Zhou filed the arbitration in the Asian Domain Name Dispute Resolution Centre (ADNDRC), claiming that the main part of the domain is as same as the pinyin of his name which is highly possible to result in the misunderstanding among the public. The ADNDRC finally adjudicated the domain to Mr. Zhou. For the dissatisfaction with the decision, Ms. Zhou brought the dispute to Shanghai No.2 Intermediate People’s Court, but the court refused all the claims of her.

In fact, there are two noted figures in China with the name of Zhou Libo. One is the author Zhou Libo (1908-1979) (note: the link is in Chinese) and the other is the comedian involved in the case. To the expression of Ms. Yue, the website of www. Zhoulibo.com is to introduce the author, and the comedian is unknown to her when she found the website.

The case is a typical dispute between domain and personal name. The post today and tomorrow will make you a brief introduction to the governing laws and judicial interpretations.

I. How to decide the infringement or the unfair competition of the domain registration or using?

Currently, the main governing regulations of the conflict is the Interpretations on Several Issues concerning the Law Application in Hearing Computer Network Domain Name Civil Disputes by the Supreme People’s Court (the “domain interpretation”), Anti-unfair Competition Law and Interpretations on Several Issues concerning the Law Application in Hearing Computer Network Domain Name Civil Disputes by the Supreme People’s Court (the “unfair competition interpretation”). Among which, the domain interpretation regulates that the following elements shall be taken into consideration when deciding the infringement or unfair conducts of domain using or registration:

(1) the legality and effectiveness of civil rights claimed to be protected by the plaintiff (note: the right owner as expressed in the post, the same below);

(2) the main part of the defendant (note: the user as expressed in the post, the same below)’s domain or its main structure is the copy, imitation, translation or transliteration of the plaintiff’s well-known trademark; or be the same or similar to the registered trademark or domain which could lead to the misunderstanding among the public;

(3) the defendant has no interests on the domain or its main part, or has no fair reason to the using or registration of the domain;

(4) the defendant is malicious over the domain’s registration or using.

Basing on the above regulations, the focus when there emerges the conflict between the domain and the name (or the company name, trademark), or in other words, the establishment of the infringement shall lie on the following points:

(1) the legality and effectiveness of the civil right as claimed by the right owner;

(2) the interests enjoyed by the website registrant or user (the “user”) on the domain or the fair reason for him/her/it to such registration or using;

(3) the malicious squatting on the domain by the user;

(4) the misunderstanding among the public on the connection between the damain and the right owner or its product;

II. The judgment on the legality and effectiveness of the civil interests claimed by the right owner

Generally, the domain of website is expressed in English letter and special symbols. Although, it’s technically supporting the expression in Chinese, such methods are not common in practices. Therefore most Chinese people’s name, company name or trademark (the “name”) would be typed as pinyin when showing in the website address.

But that also results in another problem. Since the Chinese character is not corresponding with pinyin, which is just the tool of transliteration and each pinyin or their combination may match several Chinese characters. In fact, the translated name may also face the same problem in China, like the widely argued dispute between Michael Jordan and Qiaodan, a famous local sporting wear producer in China.

Back to the case, it’s no doubt for Mr. Zhou Libo to enjoy the legal rights over his name, but it’s questionable for whether such rights could cover its pinyin zhoulibo, for there so far has developed no specific regulation or unified understanding on the issue. And the pinyin zhoulibo may be the transliteration of 周丽波 or 周立博 in addition to the name of Mr. Zhou周立波. In my view, the feasible way of Mr. Zhou to prove the commercial value of “zhoulibo” which mainly comes from his performance and he has adopted the pinyin expression in his shows before.

Surely, the above demonstration method may be only applicable in the case, while for other similar questions, the proof shall be chosen basing on the specific facts of the case.

(we will post the second part of the essay tomorrow)

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

Lawyer Contacts

You Yunting

86-21-52134918
youyunting@debund.com, yytbest@gmail.com

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