Legal Analysis on Conflict between Domain and Name Right According to Chinese Law, II

III. What are the user’s interests on the domain and fair reasons to the registration and using?

At present, the standard in practices to judge the user enjoys the interests on the domain is to determine whether there’s a connection between the user and the domain or the main part of the domain, and this connection involves the overlap or correspondence between the name, company name or trademark of the user and the domain.

Surely, it also comes to our attention that even there’s no overlap or correspondence as mentioned above, the interests on the domain of the user or a fair reason to the registration or using of the users could also be established when a domain has been operated for a long period and thereby accumulates the social reputation, like the 163. com of Netease and 360buy.com of Jingdong.

Also to take the case as the example, by the materials available to us by now, there’ re no overlap or connection between Ms. Yue and domain, and meanwhile, the website has been only renewed for 2 times after its launch. Therefore, there’s no way to discuss wether there could be any social reputation accumulated through a long period using. Of course, Ms. Yue has no fair reason for her registration and using of the domain.

IV. How to judge the malicious registration by the user?

By the past cases, the judgment on the maliciousness of the user is actually kind of evaluation over the timing and motivation of the user in registering the domain. Among them, the timing evaluation is to compare the registration time and the fame time of the subject owner or its product, and once the registration is after the known of the right owner or its product, there would be no wonder others would suspect the free-riding of such registration.

The motivation of the user is difficult to judge in general, while that does not mean it could not be quantized. The following situations of “malicious” are regulated in the domain judicial interpretation:

“(1) for commercial purposes, to register other’s well-known trademark as the domain;
(2) For commercial purposes, to register or use the domain similar or identical to the plaintiff’s registered trademark or domain, so that a misunderstanding with the products, service or website of the plaintiff could be resulted in and the internet users are thereby misled to the defendant’s website or other sites;
(3) to make improper benefits through the sale, rent or other methods to transfer with a high price offer;
(4) not to use or prepare to use the domain registered and to prevent the right owner to register the domain in the meantime;
(5) other situations for malicious.”

With all these regulations, the domain judicial interpretation also regulates an exception that “once the defendant could prove the domain held by him enjoys a reputation when the conflict occurs, and also the domain could be differentiated from the registered trademark and domain of the plaintiff, or submitting other evidence to the non-malevolence, the people’s court shall not determine such malicious of the defendant.”

For the case, after the establishment of the website by Ms. Yue, we only saw two updates of the website. And currently there are only two works uploaded of the author Zhou Libo in addition to his biography. Moreover, after the comedian star contacted her, Ms. Yue made an offer of 100 thousand yuan which is much higher than the investment of 24.68 US dollars by Ms. Yue for the website establishment and other reasonable expenses on the website construction. Last, just as discussed above, the website also enjoys no social reputation. For these reasons, the court judged Ms. Yue with the malicious intension.

V. How to judge the public misunderstanding?

The cause of the public misunderstanding is argued among the public, and there’re mainly two different opinions in practices. One is that the misunderstanding could be constituted when the domain itself may mislead the public to other subjects or their products; while the other side advocates that the misunderstanding shall mainly comes from the using of the domain, not the appearance of the domain solely, and the misunderstanding could only be made when the domain is similar or identical to the genuine one and it’s further used to imply or point to a certain subject or their products, or with its using the interests of a special subject or its products are damaged.”

To my view, the second opinion is more reasonable. The main value of the domain is reflected in the content resolute by it on the website. Suppose a website could be visited by the disputed domain, but its main content are with no connection with the right owner, then there could be no chance for the visitor to associate the website with a special subject, and thereby no trust on the website for the acceptation of the right owner will be made.

After the aforesaid analysis, another issue also comes to my attention that it is only regulated in the domain judicial interpretation that the “following elements shall be taken into consideration” for the legal situation rather than the usual description of “the following situations shall be met”. That is to say the legal situations in the interpretation are only the scope for consideration instead of the legal standard. In practices, shall all the situations regulated in the domain judicial interpretation or only part of it be met in order to establish the liability of infringement or non-fair competition, in my view it shall depend on the specific cases.

Lawyer Contacts

You Yunting

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

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