Author:	Gary Soo BSc, LLB, LLM Barrister, Gary Soo’s Chambers
Subjects:	China law (Other articles) Intellectual property (Other articles) Internet domain names -- Law and legislation (Other articles)
Issue:	Volume 11, Number 3 (September 2004)
Category:	Refereed Articles

Contents

• Chinese Domain Names As Business Identifiers
• Features Of Domain Name Protection In China
• Implications From Recent Cases
• Salient Factors In Practice
• Summary
• Notes

This article requires Chinese language character support, which is available from your browser manufacturer's website.

Chinese Domain Names As Business Identifiers

1. 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 online anywhere from the world. As such, with the Internet becoming the nerve system of the global economy, domain names acquire importance status of virtual identities of corporations on the Internet in the ever enlarging global market. All of us go for the Internet and become increasingly connected. The mode of international trade has been changed.

2. Among the worldwide Internet population, some 64.2% are non-English speaking.[1] The Internet users using Chinese had grown to over 100 millions and now represent 14.1% of the worldwide population.[2] It has been said that, with its huge population of 1.3 billion, China will soon be ranked first in terms of number of web users.[3] Indeed, the number of Internet users in China has overtaken Japan in 2002 and becomes second rank in numbers to that in United States. It has even been forecasted that, by 2007, Chinese will replace English as the most popular language used on the Internet.[4]

3. On figures, by July 2004, according to the 14th CNNIC[5] China Internet Development Status Survey Report,[6] there are already 87.0 millions Internet users in China. This records a 47.2% growth from end 2002 and the Internet population in China has simply doubled in just less than 3 years since 2000. In 2003, the number of new registration of domain names with the <.cn>[7] country code indicator has experienced an increase of 89%; the number of web pages also records a 60% increase. A steady annual growth of 48.3% is also observed in the number of computers connected to the Internet in the recent years.

4. Indeed, more insights as to the business prospects that may come can be gained from an analysis of the origins of the web pages in China. The commercial sector is the prime user of the Internet in China. Some 80% of the <.cn> domain names are engaged for business purposes and those domain names ending with <.com.cn> are experiencing an average annual growth of 20% in recent years. The growth rate of high-income Internet users in China are higher that from the lower-income end. Regions with better established information technology infrastructure, such as Guganzhou and Shanghai, also record higher growth rates of Internet users than other places.

5. At present, domain names can also be registered using Chinese characters or a designated combination of ‘Latin’[8] and Chinese characters, ending with the country code top level domain name of <.cn> or with other Chinese top level domain names. Apart from <.cn>, the Chinese top level domain names available include <.中国>, <.公司>,<.组织> and <.网络>, the first two of which are most popular as they respectively represents “China” and “Company” in Chinese and the last one represents "Organization". Since the commercial launch of Chinese domain names in 2000 by the CNNIC,[9] they quickly gain recognition and popularity in use by corporation inside and outside China. There may be three supporting reasons for this observed popular use of Chinese domain names. First, there is added administrative convenience to the users in the registration and maintenance of a Chinese domain name which is managed by a China-based registrar in terms of communication and effecting payments. It should not be forgotten that the ability and channel for paying in foreign currency outside Mainland China is not necessarily available to every local entities in China. Second, the use of Chinese domain names, particularly those administered by CNNIC, gives the unique connection with China. To everyone, a domain name ending with <.cn> or <.中国> conveys the clearest message that the concerned corporation or entity is China-based or China-related. Third, for the majority of Internet users in China, they are more accustomed to the use of Chinese[10] in navigating the Internet. Indeed, for not just a small proportion of them, using Chinese and Chinese only when reaching for the Internet is a matter of necessity rather than preference.

6. 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 China. To the broadening and expanding local and international market in China, interest 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 Chinese entities seeking to establish their positions locally and internationally. Thus, whether to local or foreign corporations, the commercial values of domain names in China are of increasing importance as business identifiers in current times of exponential growth of trade activities and large-scale economic development in various regions.

   Features Of Domain Name Protection In China

7. Naturally, with such commercial values of domain names, China cannot escape from cybersquatting. On 30 September 2002, CNNIC approved and implemented the CNNIC Domain Name Dispute Resolution Policy ("CNDRP").[11] The structure and principles of CNDRP model closely that of the UDRP of ICANN. As with the UDRP, one of the main objectives of CNDRP is to reduce the cost of resolving disputes concerning the most egregious types of cybersquatting, leaving other disputes to the court system.[12] Thus, CNDRP is designed to provide a cheap and quick way to resolve the earliest cases, rather than to replace the court as the ultimate resolution system for name rights disputes on the Internet.

8. The operation scope of CNDRP is set up in Article 2[13] and covers all disputes stemming from registration or use of the <.cn> domain names and Chinese domain names, which are subject to the management of CNNIC. Akin to UDRP, special rules of procedures, i.e. Rules for CNNIC Domain Name Dispute Resolution Policy ("Rules for CNDRP") and supplemental rules of individual dispute resolution service provider are made under CNDRP. At present, there are two dispute resolution service providers under CNDRP: Hong Kong International Arbitration Centre ("HKIAC")[14] and China International Economic and Trade Arbitration Commission ("CIETAC").[15] It may also be noted that CIETAC and HKIAC also jointly launched the Asian Domain Name Dispute Resolution Centre ("ADNDRC")[16] on 27 February 2002, which has been designated by the ICANN as one of the only four approved domain name dispute resolution services providers. Both CIETAC and HKIAC have its own set of supplemental rules, which resembles closely that of WIPO. However, these supplemental rules of HKIAC and CIETAC are almost identical save as to some logistics matters, like postal or email addresses[17] The fees schedule of HKIAC and CIETAC are the same. Fees are payable in RMB but payments by way of USD are also accepted, using the current prevailing rate of exchange.

9. A panel is appointed by a recognized dispute resolution service provider to hear and determine these domain name disputes. By Article 23 of Rules for CNDRP, the panel may be formed by a sole panelist or by three panelists with one of them being the presiding panelist. Both the complainant and the respondent may elect to require that the panel be composed of three panelists but, if no such election is made, the panel will be formed with a sole panelist appointed by the dispute resolution service provider. If neither of the parties elects for a 3-member panel, the dispute resolution service provider is to appoint, within 5 days following the receipt of the response or the lapse of time period for submitting the same, a sole panelist from its list of panelists.[18] If either of the parties elects for a 3-member panel, the dispute resolution service provider should, within the stipulated timeframe, appoint two panelists, one from each of the list of preferred candidates provided by the parties, and should further appoint the third panelist from its list of panelists as the presiding panelist. If either party is in default of providing its own list of preferred candidates, the dispute resolution service provider should use its list of panelists in replacement.[19]

10. Though 3-member tribunals are commonly engaged in arbitration in China, statistics show that the number of domain name disputes under CNDRP involving a 3-member panel is quite low. An explanation for this may be the extra costs involved and the high probability for the respondent being in default of response. In the case of a 3-member panel, the decision is can be made by the majority of them, unless where a majority decision cannot be reached and the decision is made by the presiding panelist.[20] Dissenting opinion can also accompany the majority decision.

11. Aligned with the fundamental principles of UDRP in not shutting parties from otherwise access to the court, Article 14 of CNDRP clearly confers a right on the parties to initiate an action over the same dispute before the Chinese court at Beijing or at any other place agreed by the parties. Alternatively, similar to the counterpart provision of paragraph 4(k) of UDRP, the parties may submit the same dispute for resolution by arbitration to a Chinese arbitration institution.[21] The parties may elect to do so before a complaint is filed, during the dispute resolution proceedings, or even after the panel has rendered its decision. In support of such principles, Article 15 of CNDRP also provides that, even if the panel has already rendered a decision on the matter, that decision to cancel or transfer the domain name will not be implemented if a party commences court proceedings within 10 days of the date of such a decision. To this end, further support is provided by Article 41 of the Rules for CNDRP[22] which empowers the panel to decide at its discretion whether to suspend or terminate the CNDRP proceedings, or to proceed on to render a decision, in such circumstances.

12. The proceedings start when the complainant submits a complaint and the supporting materials online or by post to one of the recognized domain name dispute resolution service providers. 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. Either of the parties may ask for the holding of such an in-person hearing at its own expenses. Yet, unlike paragraph 13 of the Rules for UDRP,[23] Article 33 of the Rules for CNDRP provides that the panel may determine that a hearing in any of those forms is necessary for deciding the complaint. The timeframe for making submissions and rendering decision generally follows that of UDRP. The date of commencement of the proceedings is the date on which the service provider completes its responsibilities in connection with the forwarding of the complaint to the respondent and the panel is required to render a decision over the dispute within 14 days from the date of its appointment.[24]

13. By Article 6 of CNDRP, unless otherwise agreed by the parties or determined by the panel, the language of the proceedings shall be in Chinese. In Accor, Société Anonyme v. Hangzhou Yage Electronic Corporation,[25] the complainant was located in France and had no knowledge of Chinese. The complainant was filed in English. Communication with the respondent was effected in Chinese but no response was received from the respondent. The true location and identity of the respondent was considered uncertain, as the contact details provided to the registrar appeared to be incomplete and there was no correspondence from respondent on the record. The inactive web site to which the domain name in issue led to was dominated by the English language. The panel considered that the overall fairness of the proceedings had been upheld in the circumstances and that the use of Chinese in this case would constitute a burden on the complainant who would have had to retain specialized translation services at a cost very likely to be higher than the overall costs of these proceedings. This, in the opinion of the panel, was a significant factor in view of the low cost of these proceedings since the procedure under CNDRP was designed particularly in the interest of speed and low cost. In view of these special circumstances, the panel decided that English, instead of Chinese, should be used as the language proceedings.[26]

14. As to the burden of proof, unlike the case in UDRP,[27] Article 7 of CNDRP expressly spells out that the complainant and the respondent are each to bear the respective burden of proof of the matters in their own claims. Coupled with Articles 34 and 35 of CNDRP which empower the panel to draw inference upon a party’s default, this is an important provision in practice since the cases under CNDRP in which the respondent is in default of response is quite high. In such situations, though the complainant still carries the burden to prove to the satisfaction of the panel that all the requisite elements under the policy, the reality is that the complainant’s uncontested allegations as to facts will have better chance of being accepted by the panel. Indeed, Article 31 of the Rules for CNDRP clearly requires that the panel to decide a complaint on the basis of the statements and documents submitted and in accordance with CNDRP, as well as any rules and principles of law which it deems applicable, and expressly states that, if a respondent does not submit a response, the panel shall, in absence of exceptional circumstances, decide the dispute based upon the complaint.

15. Same as UDRP, the remedies that the panel may only order is the cancellation or transfer of the domain name in dispute and there is no power on the panel to grant any other remedies such as injunction to shut down the concerned website or award damages or costs.

16. Also, where multiple domain names concerning the respondent are involved, Article 10 and Article 13 of the CNDRP provides for the consolidation of proceedings at the discretion of the panel. An example of this in operation is Salvatore Ferragamo Italia S.p.A. v. Kotobi Group (Mohammad Hossein Erfani)[28] where the proceedings of 3 domain names were consolidated.

17. As to the requisite elements for successfully establishing a complaint, the complainant has to prove 3 elements to the satisfaction of the panel. As listed in Article 8 of CNDRP, they are:-
    1. the disputed domain name is identical with or confusingly similar to the complainant's name or mark in which the complainant has civil rights or interests;
    2. the disputed domain name holder has no right or legitimate interest in respect of the domain name or major part of the domain name;
    3. the disputed domain name holder has registered or is being used the domain name in bad faith.

18. These 3 elements mirror those in paragraph 4(a)(i)-(iii) of UDRP. For the first element, as in the case of UDRP, no definition is given in CNDRP as to the test of confusing similarity. Regarding the second element, therefore the respondent’s right or legitimate interest over the domain name in dispute, there is nothing in CNDRP stating how the respondent can demonstrate its rights to and legitimate interests in the concerned domain name. There is simply no counterpart provision as that in paragraph 4(c) of UDRP. In relation to the element of bad faith, guidelines as to the evidence for proving the same are laid down in Article 9 of CNDRP, which roughly follow the arrangement of paragraph 4(b) of UDRP. It lists out the circumstances that may be of evidence bad faith registration and use of a domain name. These include where the disputed domain name holder has registered or acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name to obtain unjustified benefits; where the disputed domain name holder registered the domain name in order to prevent the owners of the name or mark from reflecting the name or the mark in a corresponding domain name, provided that the domain name holder has been engaged in a pattern of such conduct; where the disputed domain name holder has registered or acquired the domain name for the purpose of damaging the complainant's reputation, disrupting the complainant's normal business or creating confusion with the complainant's name or mark so as to mislead the public; and where other circumstances which may prove the bad faith.

19. Though the structure and operation of CNDRP do closely follow that of UDRP in many aspects, there are however some seemingly slight but indeed significant changes introduced in CNDRP. There are at least three of them which are of more importance than others.

20. First, the requisite rights that the complainant needs to process are much wider under CNDRP.

21. The rights concerned are "civil rights or interests" over "name or mark", which clearly extend beyond trademark rights.[29] Under Chapter 5 of the PRC General Principles of Civil Law[30] which governs the civil rights and liabilities of individuals and corporations in China, civil rights as to names or individuals, corporations and businesses are also subject to certain extent of legal protection.[31] This extended meaning is in line with Article 4(1) of the Public Notice of the Supreme People's Court Regarding Interpretations of Several Questions of the Applicable Laws at Trial of Civil Dispute Cases over Internet Domain Name.[32] However, since the PRC General Principles of Civil Law provides not much more than a framework declaration of certain types of civil rights and interests enforceable by law, the exact extent of rights and interest required under CNDRP is of quite an indefinite scope. It should also be noted that, even in the context of trademark rights, the PRC Trademark Law similarly contains no special provision for dealing with and protecting well-known trademarks and such protection in practice was very much left to be achieved through administrative recognition by the trademark authorities and, in this regard, Article 8 of the Paris Convention for the Protection of Industrial Property only establishes a norm requiring the protection of trade names. Furthermore, there is an added uncertainty as to the precise meaning of the required rights and interests in view of Article 19 of CNDRP which provides that the interpretation of CNDRP is subject to the interpretation of CNNIC.

22. Second, the circumstances tending to demonstrate absence of rights or interests of the respondent in respect of the domain name in dispute are without guidance under CNDRP. This is also material to the proof of the element of bad faith. A review of the wording of paragraph 4(c) of the UDRP[33] will show that those covered circumstances are instances of bona fide registration or use of the domain name or examples of reverse domain name hijacking[34] by the complainant. In practice, particularly for disputes involving domain names in generic terms or registered trademarks that have not been otherwise recognized in China as well-known or famous marks, the panel is now at wide liberty in forming its views on the issues of bad faith and the respondent’s rights and interests in the absence of express guidance. Also, without the protection of along the approach in paragraph 4(c) of UDRP, domain names under CNDRP may be more exposed to the risk of reverse domain name hijacking.

23. Third, mere bad faith registration or mere bad faith use of the disputed domain name is sufficient under CNDRP.

24. In contrast, paragraph 4(a)(iii) of UDRP requires both the registration and the use of the domain name is in bad faith. A complainant who fails to prove both of them will fail under UDRP.[35] Yet, under CNDRP, it is now expressly stated that the complainant is only required to prove either bad faith registration or bad faith use. Thus, a complainant may succeed under CNDRP in circumstances akin to those cases that fail under UDRP since there is initial good faith registration but subsequent bad faith use[36] or vice versa. This obviously is a less stringent requirement in comparison with UDRP and the need to rely on the special circumstances of inactive use of registered domain names in establishing bad faiths as in the frequently quoted decision of Telstra Corporation Ltd. v. Nuclear Marshallows[37] may become obsolete.

    Implications From Recent Cases

25. To see how CNDRP are put into practice, there are no better ways than reviewing the recent cases.

26. An illustration of the approach by the panel in deciding whether the complainant is in possession of the necessary civil rights or interests can be found in the recent dispute over the domain name <salala.cn>[38] where the panel confirmed that the rights or interests of the complainant required under Article 8 of CNDRP need to be in existence when the domain name in issue was registered. In that case, the disputed domain name was registered on 17 March 2003. The complainant made its trademark registration in 2001 and formally acquired trademark registration for the marks "Salala" and "莎啦啦"[39] respectively on 28 April 2003 and 14 February 2004. As to its business name, the complainant was formed in 2000 and said that its name in English was 'Salala (China) Chain Flower Net Co. Ltd.'. Though the use of the Internet, it was well-known in China in respect of online flower sales. Also, it had registered other domain names for its business, including <salala.com.cn>, <salala.net> and <salalaflower.com>. The complainant also said that the name or mark "salala" was well-known for its business and it had provided service to several millions of customers in the past 5 years. To these, the panel decided that the complainant failed to prove the necessary rights or interests under Article 8(i) of CNDRP. The panel held that the complainant could not rely on its trademark marks acquired subsequent to the registration of the disputed domain name and the fact that the complainant indeed applied for these trademark registrations back in 2001 was of no relevance in terms of the complainant's acquired rights or interests. Thus, it seems that the mere fact of having a trademark application at foot when the domain name was registered is not sufficient in satisfying the requirements under CNDRP in this regard. As to the complainant’s rights over its business name, the panel observed that its business name in English was different in substance from that as translated from its name in Chinese and remarked that the current system of business registration in China did not expressly regulate English names or its abbreviation of enterprises. On this basis, in the absence of other evidence of actual use of such a name in English, the panel refused to accept that the English name of the complainant was, as alleged, "Salala (China) Chain Flower Net Co. Ltd.". In this regard, the panel further remarked, without elaboration, that the business name of the complainant in Chinese was not the same as or confusingly similar to the key component of the disputed domain name, i.e. "salala". Further, in the absence of evidence of the use of the name or mark "salala" in the complainant's flower business, the panel held that the complainant failed to establish its civil rights over the product name or service name of "salala" and that civil rights under CNDRP could not be derived from the mere fact of registration of similar domain names by the complainant.

27. Similar to UDRP, there are no expressly provisions in CNDRP specifying when exactly the complainant needs to acquire requisite civil rights or interests for a successful complaint. Yet, repeatedly decided by panels in CNDRP proceedings, the material time to be examined is the time when the disputed domain name was registered.[40] In another similar case of Tencent Computer System Ltd. v. Yang Feixue[41] that concerned a dispute over the domain name of <qq.com.cn> between a corporate complaint in Shenzhen and an individual respondent in Beijing, the panel considered Article 8(i) of CNDRP by asking whether the domain name was the same as or confusingly similar to the name or mark that complaint had rights or interests which had priority in time. The panel held that the requirement in respect of civil rights or interests of the complainant in Article 8(i) of CNDRP was that those civil rights or interests need to have priority in time over the registration of the disputed domain name. The panel found that the complaint only acquired its concerned rights in 2002 but the domain name was registered in June 1999 and, hence, decided that the complaint failed to satisfy Article 8(i) of CNDRP, rejecting the complaint.

28. Also, under CNDRP, it is not necessary for the name or mark that the complaint concerned to be also a trademark. This obviously opens up the scope of civil rights being protected in view of the recognition of other rights over business names, trade product or service names in China.

29. On the other hand, it seems the requisite civil rights or interests need to be those recognized under Chinese laws. In Paradox Security Systems Ltd. v. Shenzhen City Paiyiduoxi Electronic Co. Ltd.[42] where the complaint was rejected by the panel of three, the domain name in dispute was <paradox.com.cn>, which was registered on 16 January 2001. The complainant had registered the trademark of "PARADOX" in various countries, such as US and Canada, in respect of security installations. The complainant was also the holder of the trademarks "PARADOX PRO" in US and Canada and "PARADOX DIGITAL DETECTION" in US. From its agent in Hong Kong, the complainant also brought in the "PARADOX" trademark in Hong Kong in 2000. Yet, in 1999, another Hong Kong company had registered in Mainland China the "PARADOX" trademark. Application to the Chinese trademark authorities by the complainant was at foot to set aside such a registration in January 2001 and to register "PARADOX PRO" as a trademark, but no decision was yet forthcoming. The panel found bad faith on the part of the respondent. Yet, the panel held that, based on the evidence, the complainant could not be found to have trademark rights in Mainland China and rejected the complaint.

30. Since the boundary of civil rights under CNDRP is not expressly defined, the required rights or interests on the part of the respondent under Article 8(ii) of CNDRP can also be indefinite. This indeed gives rise to quite a number of decisions in which the respondents successfully defended against the complaints over domain names alleged to be abbreviations in English.

31. In Societe Bic v. Shanghai Bashi Hongxung Industrial Resources Co., Ltd.,[43] the domain name in dispute was <bic.cn>. The disputed domain name was registered in 2003. The respondent was an entity in Shanghai. The complainant was an entity in France and had registered trademarks in China using the mark “bic” as earlier as 1977. The respondent had used “bic” as the abbreviation for its name in English for some time since it was established in 1998 in dealing with internationally trading partners. The panel accepted that the actual use of the name or mark “bic” by the respondent in its business constituted sufficient rights or interests on the part of the respondent for rejecting the complaint.[44] It should be noted that the actual English name of the respondent was indeed with resemblance with the abbreviation “bic” and the complainant had already acquired trademark registration in China even before the respondent was formed. In another case involving a complainant in Hong Kong, i.e. CLP Holdings Ltd. v. ‘Beijing Sanyaubatai Enterprise Management Consultant Ltd’[45] the disputed domain names were <clp.net.cn> and <clp.cn>. The respondent was an enterprise in Beijing. The complainant was a listed company in the Hong Kong stock exchange and has been using the “clp” name or mark for a very long time. It has also obtained various trademark registration for the “clp” mark in China since 2000. The disputed domain names are respectively registered in late 2002 and early 2003. The complaint for both of the domain names failed by a majority decision. The respondent contested that the name or mark “clp” was used by it as abbreviation for “Chinese Licensed Pharmacist” which would be the name of its website to which the domain names corresponded and the website was under construction. The panel accepted the explanation put forward by the respondent and found that the complainant had failed to prove the elements under Article 8(ii)&(iii) of CNDRP.

32. Thus, following that logic, there is possibility, as illustrated above, that even a registered trademark holder under Chinese laws fail in successfully established its complaint under CNDRP where the respondent conduct itself in a particular manner so as to acquire rights or interests over the disputed domain name, even though the complainant is at the material time in the dark. In the CLP Holdings Ltd. v. ‘Beijing Sanyaubatai Enterprise Management Consultant Ltd. case, there is clearly nothing in the name of the respondent that provides a link to “Chinese Licensed Pharmacist” or “clp”. The panel in that case did draw inference from the fact that the respondent also registered other domain names in Chinese of similar meaning. However, it has been repeatedly decided under CNDRP that the mere registration of domain names did not confer any civil rights or interests, at least for the purpose of Article 8(i) of CNDRP.

33. Regarding the test for confusing similarity, in cases under UDRP, such as Microsoft Corporation v. Microsof.com aka Tarek Ahmed[46] which concerns the disputed domain name <microsof.com> and Microsoft Corporation v. Mike Rushton[47] which concerns the disputed domain name <mikerosoft.net>, it was accepted that phonetic feature of the disputed domain name could be a factor for the finding that the disputed domain name was the same or confusingly similar to the mark of the complainant. Yet, further complications to domain name disputes under CNDRP may be added by the presence of the simplified version and the traditional version of written Chinese.

34. Under the registration policy of CNNIC, the registration of a domain name in either version of written Chinese will automatically register the corresponding domain name in the other version of written Chinese. Thus, the domain name holder will hold either and use both of the two versions of domain name after registration. Obviously, the two versions of Chinese domain name are not written in the same way and, for some Chinese characters, they differ vastly. However, a complainant who holds the registration of a trademark in traditional Chinese does not necessarily means that the complainant is allowed to obtain a corresponding trademark registration in simplified Chinese, or vice versa. In these circumstances, how should the panel approach the test of confusing similarity?

35. Such a situation arises in Cathay Pacific Airways Limited v. Yunnan Province Taizhongshang Technology Development Limited,[48] where the complainant asked for the transfer of both versions of the disputed domain name of <亞洲萬里通.公司>/<亚洲万里通.公司>. The complainant had obtained trademark registration for the name or mark "亞洲萬里通" in traditional Chinese but its application for trademark registration for the simplified Chinese version of the same, "亚洲万里通" was still being processed. As such, it was decided that the complainant could only rely on its rights for its registered trademark "亞洲萬里通". The panel adopted the approach in Kabushiki Kaisha Toshiba D/B/A Toshiba Corporation v. Cixi Jiasheng Electrical Appliance Co.Ltd. pcz@public.cx.nbptt.zj.cn 86-574-63243638[49] and decided that the elements under Article 8(I) of CNDRP were satisfied.

36. On the issue of bad faith, one of the key factors is whether the key component of the disputed domain name is generic or descriptive in nature. In Hewlett-Packard Company v. Mohammad Hossein Erfani and the Kotobi Group,[50] where the panel readily found bad faith on the part of the respondent in view of the fact that the domain names in issue were non-generic and non-descriptive. Yet, another key factor in this regard is the extent and scope of which the name or mark of the complainant is or should be known to the respondent. In Twentieth Century Fox Film Corporation v. 'Beijing Cinet Information Co. Ltd.',[51] where the disputed domain names were <fox.com.cn> and <fox.cn>, in directing the transfer of the disputed domain names, the panel decided that complainant's mark of "fox" was well-known notwithstanding it was descriptive in nature. Thus, for complaints based on not de facto well-known trademarks, special focus should be placed on the necessary evidence in proving bad faith on the part of the respondent.

37. When considering whether there is bad faith on the part of the respondent, the non-use or mis-use of the disputed domain name is often considered to be a power indicator. In the case of Starbucks Corporation v. 'Beijing Cinet Information Co. Ltd.',[52] the panel was of the view that the fact that the disputed domain names, i.e. <starbucks.com.cn> and <starbucks.cn>, were linked to an unrelated website and the failure on the part of the respondent to explain this satisfactorily amounted to evidence of bad faith. Likewise, in Beijing Edifien Hi-Tech Group v. Beijing Auto Cool Co., Ltd,[53] the respondent registered the domain name in issue and used it to direct Internet users to a website with content of electronic and audio products content concerning a third party. The complaint had rights over a trademark that enjoyed protection under the PRC Trademark Law in relation to audio products. The panel found that there were circumstances of bad faith under Article 9(iii) of CNDRP since the registration and use of the domain name was for diverting Internet users to visit a website of a third party corporation, thereby creating confusion created with the complaint's trademark.

    Salient Factors In Practice

38. The current regime governing domain name protection in China under CNDRP is one with unique features when it is put into operation. From the review of recent cases, certain factors salient to those, who wish to properly protect such domain names for themselves or their clients but are not too familiar with Chinese laws, should be highlighted. These may conveniently be set out in the format of a list of questions as follows:-
    1. Jurisdiction and Applicable Law
       1. whether court or arbitration proceedings are at foot or initiated, if so, whether domain name dispute resolution proceedings should be suspended or terminated
       2. whether foreign parties are involved and, if so, what the applicable law of domain name dispute resolution proceedings should be
       3. whether rights or interests in issue protected under Chinese laws

    2. Civil Rights or Interests of Complainant
       1. whether the complainant has rights or interests over trademark that is identical or confusingly similar to the domain name
       2. whether the complainant has rights or interests over trade name, product name or service name that is identical or confusingly similar to the domain name
       3. whether such rights of the complainant already exist when the domain name was registered
       4. whether such rights of the complainant in the name or mark are well-known
       5. whether such rights of the complainant in the name or mark be sufficient to establish its standing in bring the proceedings
       6. whether the mark or name in issue is identical or confusingly similar o the domain name visually
       7. whether the mark or name in issue is identical or confusingly similar to the domain name in a phonetic way
       8. whether the mark or name in issue is otherwise identical or confusingly similar to the domain name

    3. No Right or Legitimate Interest of Respondent
       1. whether the respondent has any right or legitimate interest in the domain name
       2. whether the respondent has used the domain name without notice of the complainant's mark or name prior to the complaint
       3. whether the respondent is otherwise bona fide in registering and using of the domain name
       4. whether the respondent should raise the issue of reverse domain name hijacking

    4. Bad Faith Registration and Use
       1. whether the registration or use of the domain name is for sale, lease or otherwise transfer to obtain benefits
       2. whether such benefits to be obtained are unjustified
       3. whether the registration or use of the domain name is to prevent the complainant from reflecting the complainant's name or mark in a corresponding domain name, and if so, whether there is a pattern of such registration or use by the respondent
       4. whether the complainant has registered or used other domain names
       5. whether the registration or use of the domain name is for damaging the complainant's reputation;
       6. whether the registration or use of the domain name is for disrupting the complainant's normal business
       7. whether the registration or use of the domain name is for creating confusion between that of the respondent or of other third person and with the mark or name of the complainant so as to mislead the public
       8. whether there are other circumstances tending to prove bad faith

    Summary

39. Domain names are surely powerful and effective business identifiers for a market like China and, as such, it comes as no surprise that more disputes over domain names are expected, particularly in view of the accelerating expansion of economic and commercial activities following China's accession to the World Trade Organization. The landscape on which domain name disputes under CNDRP are being resolved is a unique one with significant difference from that of UDRP in practice. As such, it would now be prudent and necessary for those involved in such disputes to go through a checklist of considerations so that salient matters but important in protecting domain names in China would not be overlooked.