Guide to HKIAC
Domain Name Dispute Resolution
1. Since 24 October 1999, the Internet Corporation for Assigned Names and Numbers ("ICANN") has approved the implementation of the Uniform Domain Name Dispute Resolution Policy (the “UDRP”). It sets forth the terms and conditions for a dispute between a domain name registrant and any third party other than the registrar concerning the registration and use of an internet domain name.
2. The UDRP has been adopted by all ICANN-accredited registrars and been included into their registration agreements for all Generic Top Level Domains (“gTLDs”), for example .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel. It has also been adopted by some managers of country-code top-level domains (“ccTLDs”), such as .nu, .tv, and .ws.
3. Currently, there are five UDRP service providers accredited by ICANN, (i) the Asian Domain Name Dispute Resolution Centre (“ADNDRC”), (ii) the Forum, (iii) the World Intellectual Property Organization (“WIPO”), (iv) the Czech Arbitration Court Arbitration Center for Internet Disputes (“CAC”), and (v) the Arab Center for Domain Name Dispute Resolution (“ACDR”).
4. ADNDRC is a charitable institution limited by guarantee registered in Hong Kong, jointly established by the Hong Kong International Arbitration Centre (“HKIAC”) and the China International Economic and Trade Arbitration Commission (“CIETAC”) in December 2001. It is the first ICANN accredited UDRP provider in Asia. ADNDRC currently has four offices, separately operating in Hong Kong, Beijing, Seoul (operated by Korean Internet Address Dispute Resolution Committee) and Kuala Lumpur (operated by Kuala Lumpur Regional Centre for Arbitration).
5. ADNDRC accepts domain name complaints concerning gTLDs. A complainant may file its domain name complaint with any of the four offices of the ADNDRC. Any gTLDs complaints filed with the Hong Kong Office of the ADNDRC will be administered by HKIAC in its capacity as the manager of the Hong Kong Office of the ADNDRC pursuant to the UDRP, the Rules of Procedures for UDRP, and the ADNDRC Supplemental Rules.
6. In 2014, ADNDRC was appointed by a number of new gTLD registries to establish English and Chinese dispute resolution policies for them and to act as their domain name dispute provider. The policies included Sunrise Dispute Resolution Policies (“SDRP”) and Charter Eligibility Dispute Resolution Policies (“CEDRP”). The centre was also appointed by the Organization for the Promotion, Protection and Progress of Frogans Technology (“OP3FT”) to provide UDRP services for Frogans addresses. These new developments broadened and deepened the services offered by ADNDRC and its four offices.
7. Since 2001, HKIAC has also been appointed by many managers of ccTLDs as domain name dispute resolution service provider. Appointment details are provided in the chart below:
|ccTLDs||Appointing Organisation||Dispute Resolution Policy||Time of Appointment|
|.hk (Hong Kong)||Hong Kong Internet Corporation Company Limited (HKIRC)||HKIRC Domain Name Dispute Resolution Policy (HKDRP)||1 June 2001|
|.cn (Mainland China)||China Internet Network Information Centre (CNNIC)||CNNIC Domain Name Dispute Resolution Policy (CNDRP)||30 September 2002|
|.ph (Philippines)||dotPH||phTLD Dispute Resolution Policy (PHDRP)||1 June 2005|
8. The Hong Kong Domain Name Dispute Resolution Policy (commonly known as “HKDRP”) is incorporated by reference into the agreement between the Registrant and the Registrar (the “Registration Agreement”) as part of the mandatory terms required by the Hong Kong Internet Registration Corporation Limited (“HKIRC”) in relation to the registration and use of a domain name in the “.hk” and “. 香港 ” country code top level domains. The HKDRP sets forth the terms and conditions in connection with a dispute between the Registrant and any party other than HKIRC and the Registrar in regard to the registration and use of a “.hk” and “. 香港 ” domain name.
9. The HKDRP provides efficient and cost effective procedures for resolving ownership disputes involving HKIRC domain names. To succeed, the complainant in an HKDRP proceeding must satisfy three conditions: (a) the Registrant domain name is identical or confusingly similar to a trademark or service mark in Hong Kong in which the complainant has rights; (b) the Registrant has no right or legitimate interests in respect of the domain name; and (c) the Registrant domain name has been registered or is being used in bad faith.While these basic features of the HKDRP are similar to those of the UDRP, certain distinguishing features of the HKDRP are highlighted here:
10. Mandatory arbitration – According to Article 4 of the HKDRP, filing a complainant under the HKDRP is considered as initiating a mandatory arbitration proceeding against the other party, and a HKDRP proceeding is therefore governed by the Hong Kong Arbitration Ordinance (“AO”). As a result, an award rendered in accordance with the HKDRP is not subject to appeal in any court, and is considered as an arbitration award rendered in Hong Kong for the purpose of enforcement under the New York Convention.
11. Domain names in pairs - According to Article 6 of Domain Name Registration Policies, Procedures and Guidelines of .hk and . 香港 domain names, the same Registrant can choose to bundle its “.hk” and “. 香港” domain names if the second-level domain name is the same. A bundled domain name will be treated as ONE domain name for purposes of transfer and renewal. Therefore, although Article 3(c) of the Rules of Procedures of HKDRP only allows the complainant to relate to one domain name in a filing, where a domain name is held as a pair, it shall be handled together in the arbitration proceeding.
12. Additional eligibility requirement for individual Registrant - Under Article 4(a)(iv) of the HKDRP, if the Domain Name is registered by an individual person, the domain name registered must be the Registrant’s own individual name, which can be either the Registrant’s legal name, or a name by which the Registrant is commonly known. Violation of the eligibility requirement is actionable under the HKDRP.
13. On 14 February 2006, the China Internet Network Information Center (CNNIC) promulgated its current version of the CNNIC Domain Name Dispute Resolution Policy (the CNDRP), which governs disputes relating to .cn and .中国 domain names (CNNIC domain names).
14. The CNDRP provides a set of efficient and cost effective procedures for resolving ownership disputes involving CNNIC domain names. To succeed, the complainant in a CNDRP proceeding must satisfy three conditions: (a) the disputed domain name is identical or confusingly similar to the complainant's name or mark in which the complainant has civil rights or interests; (b) the disputed domain name holder has no right or legitimate interest in respect of the domain name or major part of the domain name; and (c) the respondent has registered or has been using the domain name in bad faith.While CNDRP has incorporated relevant portions of the UDRP, certain distinguishing features of the CNDRP are highlighted here:
15. Two-year limitation period – According to Article 2 of the CNDRP, “the dispute resolution service providers do not accept the complaint regarding domain names with registration term of over TWO years.” A literal interpretation of the policy suggests, that if a domain name has been registered for more than two years, a CNNIC dispute resolution service provider will not accept the complaint.The introduction of a limitation period into the rules governing CNDRP proceedings does not preclude a trademark owner from challenging a CNNIC domain name registration via other legal actions; for instance, by commencing a civil suit in the PRC People’s Courts.
16. The administrative panel in the UDRP proceeding is required to render a decision within 14 calendar days, if no exceptional circumstances exist.1 In a domain name dispute resolution proceeding, remedies granted by the panel are limited. In the event that the panel finds a complaint justified, it may order that the disputed domain name be transferred from the registrant to the complainant, or that the domain name be cancelled. On the other hand, if a complaint is found unjustified, the complaint will be rejected and the registrant will be entitled to retain the disputed domain name. In the case of a three-member panel, the panel’s decision shall be made by majority and any dissenting opinion shall accompany the decision.2
17. Usually, the complainant in its complaint form will ask the panel to transfer the disputed domain name. In very limited circumstances HKIAC panels ordered the registered domain name to be cancelled regardless of the complainants’ requests to transfer. This usually happens when the complainant is able to establish that the registration of the disputed domain name is abusive, but the panel is of the view that the complainant is not entitled to the disputed domain name. For example, in Alibaba Group Holding Ltd. v. Lai Qi Xing (HKIAC Case No. DCN-0900328, 17 June 2009, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-0900328_Decision.pdf), although the complainant was able to show that the disputed domain name www. alibababank.com.cn is closely related to its well-known “Alibaba” trademark, the panel ordered the cancellation of the domain name because Alibaba Group Holding Ltd. was not at that time engaged in any banking related business activities.3 In recent years, HKIAC panels have rarely ordered the registrar to cancel a disputed domain name rather than transferring it directly to complainants.4
1 Uniform Dispute Resolution Policy (UDRP) Rule 15(b).
2 UDRP Rule 15(c) & (e).
3 For some examples of HKIAC panels ordering the disputed domain name to be cancelled, see e.g. Hugo Boss v. Boss (Shenzhen) Company (HKIAC Case No. DCN-0600068, 26 August 2006, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-0600068.pdf), Educational Testing Services v. Guangzhou Keyi Keji Fazhan Youxian Gongsi (HKIAC Case No. DCN-0600053, 23 July 2006, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-0600053.pdf).
4 See also Doug Isenberg,‘Why Cancel a Domain Name in a UDRP Case’ (Giga Law, 19 April 2017) <https://giga.law/blog/2017/04/19/why-cancel-domain-in-udrp>.
18. Within three calendar days after receipt of the decision from the panel, the HKIAC Secretariat reviews the decision for formality issues, and then the HKIAC shall publish the decision on its website and notify the parties and the concerned registrar of the decision.5 The registrar will then communicate with relevant parties the date for implementation of the decision.6 If the panel decides that the domain name to be cancelled or transferred, the registrar will wait for 10 business days before implementing the decision. If the respondent provides supporting documents verifying that, within such period, it has commenced a lawsuit against the complainant at a competent court, the concerned registrar will not proceed to implement the decision.7
19. Implementation of decisions under HKDRP is different. As it is an arbitration proceeding, the decision by an arbitration panel is final and binding, and therefore a HKDRP decision is not subject to appeal to a court. After being notified of the decision, the registrar will implement the decision after 10 business days.8 If a registrar does not implement the decision, without a reason acceptable to the HKIRC, the HKIRC shall execute the decision.9
20. As of July 2017, the HKIAC panel is composed of experienced neutrals that are independent from the service provider, ICANN, the concerned registrar, parties to the disputes, and their legal representatives. ADNDRC/HKIAC domain name panelists are selected on the basis of the applicants’ well- established reputations, knowledge or expertise in the intellectual property field, impartiality, sound judgment, experience as a decision-maker, language abilities, and special knowledge of the Asia-Pacific region. This is reflected in the published professional profiles of each of the ADNDRC/HKIAC panelists. As of July 2017, the ADNDRC panel is comprised of 180 panelists from 16 countries, speaking 20 languages amongst them.
5 UDRP Rule 16(a).
6 UDRP Rule 16(d).
7 UDRP paragraph 4(k).
8 Domain Name Dispute Resolution Policy for .hk and .香港 domain names (HKDRP) 4(k).
9 HKDRP paragraph 4(k).
21. The geographical distribution of parties involved in domain name cases filed with the HKIAC has a wide reach. Statistics of the top regions that complainants and respondents are from and of the languages used in HKIAC proceedings between January 2014 and July 2017 are shown in the following chart:
|Domicile of Complainant||Number of Cases|
|United States of America||244|
|Domicile of Respondent||Number of Cases|
|Language of Cases||Number of Cases|
22. A re-filed case concerns the complainant submitting a second complaint involving the same domain name and the same respondent, where an earlier complaint had been denied or otherwise withdrawn. It is generally accepted that a re-filed case may only be accepted in limited circumstances.10 Although UDRP panels have no appellate authority to rehear a decided dispute, the second clause of UDRP Rule 15(a) has been interpreted to grant panels broad direction to apply “any rules and principles of law that it deems applicable.”11
23. After the WIPO decision Creo Products Inc. v.Website In Development,12 it has usually been held that a re-filed case can only be accepted in a very limited set of circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). The following criteria are used to determine when a re-filed case can be accepted: i) when the complainant establishes that legally relevant developments have occurred since the original decision; ii) a breach of natural justice or of due process has objectively occurred; iii) where serious misconduct in the original case that influenced the outcome is subsequently identified; iv) where raw material evidence that was reasonably unavailable to the complainant during the original case is presented; or v) where the case has previously been decided expressly on a “without prejudice” basis.
24. These principles are generally followed by HKIAC panels. In Trainingmask LLC v. Xu Jing (HKIAC Case No. DCN-1600717, 15 February 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1600717_Decision.pdf), the complainant Trainingmask LLC waited for a year to resubmit the case to HKIAC after failing to prove it in front of a CIETAC panel. The HKIAC panel considered that there was a strong presumption that the dispute resolution procedure has been abused by the complainant. First, the complainant waited for approximately one year to re-file the case instead of taking it to a competent court; second, the complainant intentionally tried to re-file the case at a different service provider. Trainingmask LLC is the first HKIAC administered CNDRP case that was dismissed on the basis of res judicata, which suggests that HKIAC panels are willing to avoid repetitive disputes over the same domain name in order to protect finality of a previous panel’s decision. Therefore, unless significant new evidence has been discovered, parties should generally avoid re-filing a case involving a domain name that has already been disputed and determined.
10 WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Jurisprudential Overview 3.0) 4.18.
11 UDRP paragraph 15(a).
12 Creo Products Inc. v.Website In Development, D2000-1490 (WIPO 19 January 2001).
25. Higher review standards are used in “.hk” cases because “.hk” awards are not appealable. In M&M Company Limited and Waimanly International Lmited v. Mini Pit Limited (HKIAC Case No. DHK-1400117, 24 February 2015, www.hkiac.org/sites/default/files/ck_filebrowser/IP/hk/decision/DHK-1400117_Decision.pdf), the complainants requested the panel to transfer the domain name www.iimo.com.hk to them. Respondent in this case Mini Pit Limited was the original licensed distributor of the first complainant M&M Company Ltd., a Japanese toy manufacturer, in regions including the People’s Republic of China, Hong Kong and Taiwan, and continued to possess the disputed www.iimo.com.hk domain name after its “reselling and other rights” were terminated pursuant to a “termination notice”. In the original proceeding, the panel was not able to find bad faith by the respondent and dismissed the claim. Soon after the decision was rendered, the complainants re-filed the case at HKIAC. In the re-filed complaint, they contended that the first panel had misinterpreted the underlying agreement and “had a gross misunderstanding and indeed a wrong finding of facts . . . that led to a breach of natural justice.” Therefore, according to the complainants, the re-filed case was the “mere pursuit of defending their rights to a fair and just opportunity to have their case properly considered.” In the re-filed proceeding, the HKIAC panel adhered to the high Creo Products standards and decided that the case did not warrant being reopened. In addition, the panel reasoned that, unlike UDRP proceedings, “HKDRP proceedings are designed to be mandatory arbitration proceedings and that an award made by an arbitral tribunal pursuant to an arbitration agreement is final and binding on the parties.” The panel reasoned that on the totality of circumstances, “the previous panelist has taken into consideration all materials before him in reaching his decision” and “there is [no] serious irregularity in the decision of the previous complainant.” If parties would like to challenge the decision, “there are statutory options available to the complainants…in a court of law”13 and parties should follow procedures one would follow to challenge enforcement of an arbitration decision rendered in Hong Kong, in order to challenge a HKDRP decision.
26. The general view and recommendation of the WIPO Final Report is that a time bar to bringing claims in respect of domain names should not be introduced.14 This is based on principles that trademark owners are not usually expected to be permanently monitoring every instance of potential trademark abuse, or to be constantly trying to enforce them.15 According to one WIPO panel, “a remedy available in an Administrative Proceeding under the Policy is not equitable.”16 Therefore, under the UDRP, it usually does not matter that there is a delay between the registration of a domain name and the filing of a complainant.
27. Unlike the UDRP, CNDRP sets a time bar which stipulates that no complaints concerning a “.cn” (or “. 中国 ”) registration more than two years old will be accepted.17 This time bar has in the past been criticized for imposing unreasonable time limits that would prevent the fair and equitable enforcement of intellectual property rights.
28. However, some HKIAC panels have considered that the transfer of a “.cn” domain name to a third party is a new registration, thus re-setting the 2-year time bar. In Lester Brands AV v. Chen Qiuheng (HKIAC Case No. DCN- 1500641, 10 October 2015, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1500641_Decision.pdf) regarding the domain name www.leister.net.cn, the HKIAC panel ruled that the transfer of a “.cn” domain name from one party to another constituted a new registration under the CNDRP and therefore “resets” the two-year time limit for bringing a domain name complaint. According to the panel, the language “registering or acquiring,” which appeared in Article 9 of the CNDRP for the purpose of considering the registrant’s bad faith, indicated that a domain name that has been assigned or transferred to another party can be subject to the CNDRP if an “acquisition” occurred within two years before an administrative proceeding is commenced. The panel found that since the procedures for registration and assignment of a domain name were substantially similar, the assignment of a domain name was essentially a form of registration.The panel also referred to the fact that it has generally been accepted that the transfer of a domain name constituted a new registration under the UDRP, for consideration of bad faith. Two years after Lester Brands AV was decided, a transfer to a third party that occurred within two years before a CNDRP complaint was filed has again been considered as re-setting the two-year time bar in Airbnb Inc. v. Guo Lanzhi (HKIAC Case No. DCN-1700742, 3 July 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700742_Decision.pdf).
13 M&M Company Limited 22-23.
14 WIPO Final Report para 197-99.
15 WIPO Jurisprudential Overview 3.0 4.17.
16 The Hebrew University of Jerusalem v.Alberta Hot Rods, D2002-0616 (WIPO 7 October 2002).
17 CNNIC Domain Name Dispute Resolution Policy (CNDRP) Article 2.
29. UDRP 4(c)(ii)(f) allows consolidation if the dispute concerns multiple disputes between the respondent and the complainant. Either party may petition to consolidate the disputes and the dispute will be decided by the same panel. A single proceeding is appropriate “where the particular circumstances of a given case indicate that [a] common [ownership or] control is being exercised over the disputed domain names or the websites to which the domain name resolves.”18 Therefore, as the language of UDRP indicates, such consolidation can only occur in multiple disputes concerning the same complainant against the same respondent. According to UDRP paragraph 4(c)(ii)(f), the first Administrative Panel to which such a request for consolidation has been submitted “may consolidate before it any or all such disputes in its sole discretion”.
30. Pursuant to UDRP Rule 1, “respondent” is defined as the holder of a domain name. HKIAC jurisprudence shows that sometimes true identities of the beneficial owner are undisclosed as it is common for domain name registrars to have incomplete information about the domain name right holder, either because the domain name right holder has used different names when registering different domain names, or because the domain name is owned by a controlling entity and the entity used its different employees’ names to register at different registrars. WIPO allows the parties to amend the complaint to include later discovered domain name holders, to prove that the disputed domains are held by the same controlling entity. In HKIAC’s current practices, it usually allows such requests if there is a prima facie case that the complaint involves disputes against the same respondent, for example, if different domain names are registered under the same address, or if the contact person uses the same contact number, and passes such claims to the panel.19
18 Gerald M. Levine, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy (1sted, Legal Corner Press, LLC, 2015), at 426.
19 See Charles Schwab & Co Inc. v. Wang YanRong and Rong, (ADNDRC Case No. HK-1400639, 10 October 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1400639_Decision.pdf).
31. According to UDRP Rule 3(c), the complainant may relate to one or more domain names, provided that the domain names are registered by the same domain name holder. HKIAC panels often grant consolidation requests in complaints against multiple related domain names held by the same registrant. In Tencent Holding Limited v. Zhou Hongsheng (ADNDRC Case No. HK-1700951, 6 April 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700951_Decision.pdf), 129 “.com” domain names that were related to the “Tencent” trademarks were consolidated into the same proceeding and a decision was rendered in favor of the complainant. Other similar recent cases in which complainants related to more than one domain name include Tencent Holding Limited v. Zhou Hongsheng (HKIAC Case No. DCN- 1700727, 6 April 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700727_Decision.pdf), Facebook Inc. v. Zhang Guo Jie (HKIAC Case No. DCN-1600706, 8 November 2016, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1600706_Decision.pdf), Paul Smith Group Holding Limited v. Geraldine McDonagh (ADNDRC Case No. HK-1700956, 11 May 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700956_Decision.pdf), Suning Commercial Group v. Yuan Bing (ADNDRC Case No. HK-1700955, 25 April 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700955_Decision.pdf), and Tencent Technology (Shenzhen) Company Limited and Holding Limited Company v. Lim Sang Woon (ADNDRC Case No. HK-1700964, 25 May 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700964_Decision.pdf).
32. Single-member panels and three-member panels are both available for selection by parties to adjudicate a domain name dispute. UDRP Rule 6(b) states that the default rule for any UDRP proceeding is to compose a single-member panel as appointed by the service provider, unless either the complainant or the respondent has elected a three-member panel. The Complainant will have the first opportunity to make an option by indicating the number of panelists in the complainant form. In that case, the entire cost for the three-panel selection will be borne by the complainant. In the event that a single-member panel is elected by the complainant, the respondent may switch to a three-member panel, provided that the respondent shares half of the fees for a three-member panel.20 The party that elects a three-member panel should be responsible for providing names and contact details of three candidates to serve as one of the Panelists, drawn from the Provider’s list of panelists. The presiding panelist will be appointed by the provider through a listing mechanism, in which five candidates will be provided to each party for a ranking of preference. For example, in Dell Inc. and EMC Corporation v. Tao Jiang (ADNDRC Case No. HK-1700940, 21 April 2017, https://www. adndrc.org/diymodule/docUDRP/HK-1700940_Decision.pdf) and MIS Quality Management Services Corp v. Beijing Riskcalc Company (HKIAC Case No. DCN-1600684, 15 June 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1700940_Decision.pdf), both respondents elected a three-member panel in their responses believing that the benefits of having a three-member outweighed any additional cost borne by parties. Between January 2014 and July 2017, a three member panel was only responsible for 1.3% of all HKIAC administered domain name cases.
33. In its appointment process, the HKIAC requests candidates to disclose any potential conflicts before accepting appointments. Common examples of conflicts include past employment and other forms of past working relationships that might affect the appointee’s independent judgment or performance of duties with diligence and good faith. Disqualification requests in HKIAC administered domain name dispute resolution proceedings are rare.
20 UDRP Rule 6(c).
34. In domain name dispute resolution proceedings, a respondent’s failure to respond does not automatically result in a decision in favor of the complainant. There are cases which complainants based on wholly unsupported assertions and without respondent responding to such complaint, where the decisions have resulted in respondent’s favor.21 Between January 2014 and July 2017, HKIAC records show that in 19% of HKIAC accepted cases the respondent filed a response, and this figure is increasing in this region as more domain name holders have started to retain legal counsels to help defend cases against them. Currently, in about 4.3% of the HKIAC administered domain name cases, the respondent is represented by a legal counsel. In accordance with Rule 5(e) of the UDRP, if a respondent does not submit a response, the panel shall decide the dispute solely based upon its complaint.
35. Pursuant to UDRP Rule 5(a), within twenty (20) days of the date of commencement of the administrative proceeding the respondent shall submit a response to the provider. According to UDRP Rule 5(d), the provider may, in exceptional cases, extend the period of time for the filing of the response. It is HKIAC’s standard practice to ask the complainant for comments if such a request has been submitted by the respondent, and a stipulation agreeing to an extension supports an application without exceptional circumstances. In the event that one party continues to delay the proceeding, panelists often cite UDRP paragraph 10(a) to allow or disallow a particular claim. According to UDRP paragraph 10(a), the panel shall conduct the administrative proceeding in such a manner as it considers appropriate in accordance with the Policy and the Rules, and according to UDRP Rule 10(b), in all cases, the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case.
21 See Wong To Yick v. Chun Hoi Cheung (ADNDRC Case No. HK-1600908, 30 November 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1600908_Decision.pdf).
36. Usually, for first time extension applicants, HKIAC allows an extension of five (5) days. In Dell Inc. and EMC Corporation v. Jiang Tao (ADNDRC Case No.HK-1700940, 21 April 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700940_Decision.pdf), after the 20-day reply deadline had passed, the respondent asked HKIAC to extend the response deadline because the complaint was served on them during the Chinese Lunar New Year. When HKIAC asked for complainant’s comments, the complainant opposed such requests. HKIAC then denied the respondent’s request and passed the case on to the Panel. After the Panel took the case, it issued two procedural orders stipulating the procedure of the case by extending the reply deadline for the respondent to fully prepare its claims.
37. The Burden of proof in domain name dispute resolution proceedings rests on the complainant. For example, under the UDRP, the complainant must prove all three elements under UDRP rule 4(a) before it can prevail and have a domain name transferred or cancelled. The three elements are: i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; ii) the registrant of the domain name has no rights or legitimate interests in respect of the domain name; and iii) the domain name has been registered and is being used in bad faith.22
38. Usually, the complainant’s burden of proof is considered to be similar to the preponderance of evidence standard used in common law jurisdictions. If the panel is satisfied with the complainant’s showing of the prima facie case, the burden shifts to the respondent to rebut. However, in domain name proceedings, even if the respondent is silent and the prima facie case has been established, it is not conclusive against the respondent that there is an abusive registration. “The absence of good faith does not constitute bad faith.” For example, in two related cases Wong To Yick Wood Lock Ointment Limited v. Chun Hoi Cheung (ADNDRC Case No. HK-1600908, 30 November 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1600908_Decision.pdf) and Wong To Yick v. Xie Jun Lian (ADNDRC Case No. HK-1600907, 26 December 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1600907_Decision.pdf), both panels were of the view that the complainant was not able to satisfy the burden of proving the respondent’s bad faith by only submitting a WHOIS search result, the registration certification of the trademark “Wong To Yick” and GoDaddy Registration documents, and therefore dismissed complainant’s claim. As reasoned by the panel, “none of these documents is able to establish that the disputed domain name was registered and being used in bad faith.”23
22 UDRP paragraph 4(a).
23 See Wong To Yick v. Chun Hoi Cheung (ADNDRC Case No. HK-1600908, 30 November 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1600908_Decision.pdf).
39. UDRP provides that a proceeding may be suspended to facilitate settlement negotiation, or to implement a settlement agreement between parties.24 Usually a panel will not issue a decision that is not requested by the parties, and parties that have agreed to settle after a proceeding has commenced need to submit the standard HKIAC settlement form.
40. In Rimova GmbH v. Chi Wai Kwan (ADNDRC Case No. HK-1700945, 10 April 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700945_Decision.pdf), after the respondent’s deadline to file a response expired, “emails were exchanged between the parties and the ADNDRC and these administrative proceedings were put on hold for a time with a view to possible settlement”, however,“no settlement was concluded between the parties”.The proceeding was put on hold for more than 30 days and the proceeding was reinitiated after that.
41. UDRP Rule 11(a) states that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.”25 However, it is common for parties to request a change of languages and panels will generally seek practical explanations to see whether such requests shall be granted. Since many websites in this region are created for Chinese speaking internet users, requiring the respondent to translate when the complainant clearly understands the languages of the respondent is burdensome and inefficient.
24 UDRP Rule 17.
25 UDRP Rule 11.
42. HKIAC panelists examine the following factors before reaching decisions as to what language is to be used in the administrative proceeding: i) respondent’s familiarity with complainant’s language; ii) the content of the website and the language used in the intended market of the advertised goods on the website; iii) language of evidence submitted by parties.
43. UDRP Rule 12 provides that “in addition to the complaint and the response, the panel may request, in its sole discretion, further statements or documents from either of the parties.” This right is usually exercised by issuing a procedural order. HKIAC panels have issued procedural orders requesting submission of supplemental evidence, granting a party’s request to extend a certain response deadline, granting one party’s choice of adding panelists during the proceeding, and granting a party’s request to change the language of the proceeding.
44. For example, in NBA Properties v. Li Junyi (ADNDRC Case No. HK- 1700994, 16 August 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700994_Decision.pdf), by issuing the procedural order, the panel accepted submission of supplemental evidence by the complainant and set a new deadline for respondent to respond to such a submission. In Marshall Amplification PLC v. Pan Xiaoyun (HKIAC Case No. DCN-1700730, 12 June 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700730_Decision.pdf), in the procedural order the panel granted the complainant’s request to change the language of proceeding from Chinese to English and asked the complainant to submit supplemental evidence. In Dell Inc. v. Zhang Guoxiang (ADNDRC Case No. HK-1600924, 29 December 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1600924_Decision.pdf), by issuing a separate procedural order, the panel asked the complainant for supplemental evidence to clarify that complainant had standing in this case; the complainant was required to submit the supplemental evidence within seven (7) days and a new deadline for the respondent to respond to complainant’s submission was set.
45. General consensus is that under the UDRP system, decision makers do not resort to national laws in a particular jurisdiction.26 Panels have broadly noted that insofar that the UDRP proceeding is designed to operate in a global context, as the development of UDRP jurisprudence should not be dependent on any national law principles. However, both CNDRP and HKDRP are enacted to protect domain names registered in specific regions and HKIAC panelists generally agree that the interpretation of CNDRP should be consistent with Chinese law and legal principles. In some cases, HKIAC panelists also refer to relevant decisions made by Chinese national courts, although these decisions are not considered binding authorities.27
46. UDRP paragraph 4(k) provides that each party may challenge the panel’s decision in a court of law, by submitting the dispute to a court of competent jurisdiction, for independent resolution before the mandatory administrative proceeding is commenced or after such a proceeding is concluded.28 If the respondent commences the lawsuit after receiving the UDRP complainant or during an administrative proceeding, the panel has the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
26 Holger Hestermeyer, ‘The Invalidity of ICANN’s UDRP Under National Law’  3 Minnesota Intellectual Property Review 1.
27 See Airbnb Inc. v. Guo Lanzhi (HKIAC Case No. DCN-1700742, 3 July 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700742_Decision.pdf).
28 UDRP paragraph 4(k).
47. Proving a right to maintain a claim is a fundamental threshold in domain name dispute resolution proceedings. The UDRP standing is based on two elements set out in UDRP paragraph 4(a)(i), the domain name is either “identical” or “confusingly similar” to complainant’s trademark, and the complainant has some “rights” in the allegedly infringed trademark.29 Usually, the trademark owner, licensee or assignee are considered to have the necessary “rights” to initiate a proceeding.
48. The fact that the trademark is not registered or the complainant has no presence in respondent’s country of residence does not defeat the complainant’s right to maintain a UDRP proceeding, although it may be a factor in determining whether the respondent registered the domain name in bad faith.30 For example, under traditional UDRP jurisprudence, American trademark applicants can even reserve a trademark by filing an “intent to use” application, because the application itself is considered a form of trademark right in the United States.31 In some cases, further evidence may be required to satisfy the “prior use” doctrine in order to show unregistered marks, recognition in the marketplace and proof of a second meaning. That being said, in UDRP cases, proof of registration of trademarks similar to that of the domain name and registered trademarks in multiple jurisdictions have high persuasive value. This has impacted HKIAC jurisprudence: where a common law trademark requirement is satisfied, it releases the complainant from further burdens on proving the rights or legitimate interests.
49. However, since Article 8 of the CNDRP requires that the complainant have “civil rights or interest” in its name or mark, an unregistered trademark generally falls short of the necessary proof in “.cn” cases.32 In Pacific Alliance Investment Management (Hong Kong) Limited v. Xie Cheng Huo (HKIAC Case No. DCN-1000406, 28 July 2010, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1000406_Decision.pdf), the complainant was a Hong Kong company that had no business presence or registered trademark in the People’s Republic of China, and the panel considered that the complainant did not have the civil rights as required by the CNDRP. In addition, HKDRP requires that the trademark itself is in some ways known in Hong Kong, either through trademark registration in Hong Kong or the common law “prior use” principles.33
29 Levine, at 95.
30 Levine, at 115.
31 Levine, at 119.
32 See Google Inc. v. Zhou Xiaolan, CN-1000329 (CIETAC).
33 See e.g. Shenzhen Da-Jiang Innovation Technology Company v.Trippro Trading Company (HKIAC Case No. DHK-1600128, 30 March 2016, www.hkiac.org/sites/default/files/ck_filebrowser/IP/hk/decision/DHK-1600128_ Decision.pdf), Television Broadcasts Limited v. Samuel Chan (HKIAC Case No. DHK-1500126, 19 January 2016, www.hkiac.org/sites/default/files/ck_filebrowser/IP/hk/decision/DHK-1500126_Decision.pdf).
50. Sometimes HKIAC panelists require the complainant’s trademarks be registered in accordance with the Trademark Classification List of Goods and Services in the People’s Republic of China in “.cn” cases. In The Association of Charted Certified Accounts v. Wu Wei (HKIAC Case No. DCN-1000391, 21 May 2010, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1000391_Decision.pdf), although the complainant had registered an “ACCA” graphic trademark in China, the respondent had been assigned separately by a legitimate “ACCA” trademark owner in another class, and the website had been used to market products that were in the same class as the assigned trademark. Therefore, the complainant’s claim was rejected.
51. In Novalash Inc. v. Novolash Cosmetics China (HKIAC Case No. DCN- 1500616, 27 April 2015, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1500616_Decision.pdf), the Texas incorporated company Novalash Inc. complained against a Chinese cosmetic incorporation specializing in providing eyelash extension services for using disputed domain name www.novolash.cn. Business franchises of the complainant were present in more than 40 jurisdictions, operating beauty clinics and providing training to local staff on their patented eyelash extension technologies. The complainant had been awarded numerous honors including America Spa Professional’s Choice Awards and Beauty Launchpad Reader’s Choice. It registered www.novlash.com on March 1st 2005 and since then maintained it as the business’s official website. However, the complainant had never registered a trademark in China, and the respondent registered “NOVOLASH” trademark China in 2013, a few days after its businesses came into the existence. The panel was of the view that the complainant had no recognized civil right in relationship to the disputed domain name and therefore did not have a standing in this case.
52. Unregistered trade names that are commonly associated with the complainant’s businesses are usually recognized for standing purposes, while trade names composed of generic terms or descriptive terms that could be suitable for many different kinds of businesses may fail to qualify as such right.34 In Chiu Tsen Hu v. Andy Rose (ADNDRC Case No. HK-1500719, 16 April 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500719_Decision.pdf), the complainant was an IT consulting company that ran various trading businesses, including selling domain names on its e-commerce platform www.608.com. The complainant had not registered the trade name associated with the domain name www.608.com, but had been using it continuously in relation to his business. The panel reasoned that registration of a trademark was not a prerequisite in domain name disputes. Since there was sufficient proof that the disputed domain name was originally owned by the complainant and had been used as a trade name for promoting his business, the panel allowed the case to proceed.
34 Levine, at 161.
53. Assessing the degree of similarity usually involves some side-by-side comparison, which can be a literal comparison between the trademark and the domain name. While each case is judged on its own, general consensus is that “where a domain name incorporates the entire trademark,” the domain name is considered confusingly similar to the mark for UDRP requirements.
54. The top-level suffix in the domain name would usually be disregarded when a comparison is conducted, except in cases where the applicable top-level suffix itself forms part of the relevant trademark. Ordinarily, panels disregard top-level domain names in the comparison. However, the recent introduction of more gTLDs has sometimes made a comparison including the gTLD necessary, especially when top level domains form part of the infringed trademark.35
55. Since Chinese characters have been allowed in domain names, Chinese characters are generally treated the same way as alphabetic characters. For example, in Shenzhen Dajiang Innovative Technology Company v. Shenzhen South Chuang Fu Investment Limited Company (HKIAC Case No. DCN-1600701, 31 October 2016, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1600701_Decision.pdf), when the panel compared a Chinese character trademark 大疆創新 to the Chinese character domain name 大疆創新.cn, the domain name that contained Chinese characters was treated the same as the original Chinese trademark and therefore, the disputed domain name was transferred to the brand owner.36 This point has also been expressly recognized in the HKDRP, which has a provision stating that for the purpose of requirements in relation to Chinese domain names, the traditional or simplified form or any other variant set out in the Chinese Character Variant Table37 of a Chinese character appearing in a domain name or trademark will be considered to be identical and confusingly similar to that Chinese character.38
35 WIPO Jurisprudential Overview 3.0 1.11.
36 For more examples please see Cainiao internet technology company v. Liu Guangming (HKIAC Case No. DCN-1500661, 26 January 2016, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1500661_Decision.pdf), Perkins Holdings Limited v. Yang Dong (HKIAC Case No. DCN-1500645, 23 October 2015, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1500645_Decision.pdf) etc.
37 A Chinese character combination method as used by users in regions including Hong Kong and Taiwan, available at https://www.hkirc.hk/pdf/cn_v1CombinedTable(11%2002%2011).pdf
38 HKDRP paragraph 4(a).
56. Pinyin is the Chinese phonetic name of a foreign language term and it is generally accepted by the Chinese as the roman numeric way to describe a term, while the term itself has no substantial meanings to non-Chinese language users. According to the WIPO Jurisprudential Overview 3.0, Chinese pinyins are treated in the same manner as English characters.39 The HKIAC panelists often decide that the use of a trademark’s Chinese pinyin in one’s domain name is equivalent to the use of the trademark itself, thus resulting in confusing similarities. Panelists usually base their reasoning on the rationale that the Chinese pinyin is more recognizable to Chinese consumers and are more commonly used as the identifier of certain foreign brands.
57. In Mead Johnson & Company LLC v. Hong Kong Ouyear (Group) Co. Ltd. (ADNDRC Case No. HK-1400581, 24 April 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1400581_Decision.pdf), the complainant was a US company that had registered its trademark in English characters in the Asia Pacific Region. It also had created a Chinese name and registered it as its own trademark.The complainant insisted that there was one-on-one association of its Chinese character name and the “Mead Johnson” brand. The panel agreed that the disputed domain name contained the full pinyin “meizanchen” of the complainant’s registered Chinese trademark, and the word “meizanchen” did not have its own meaning in Chinese separate from the trademark. Therefore, a confusing similarity was found.40
58. In Student.com Ventures Limited v. Wang Cheng (HKIAC Case No. DCN- 1600685, 2 June 2016, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1600685_Decision.pdf), the panel held that pinyin translation used in a domain name did not have to be the only available Chinese pinyin of the complainant’s trademark. In this case, the complainant’s Chinese registered trademark “Overseas Students Living” had various possible Chinese pinyin translations including “liuxueshenggongyu”, which was used by the respondent to register a “.cn” domain name. Although the panel agreed that “liuxueshenggongyu” was not the only available Chinese pinyin of “Overseas Students Living”, it was considered to be confusingly similar or identical to the complainant’s trademark.
39 WIPO Jurisprudential Overview 3.0 1.14.
40 See also Disney Enterprises Inc. v. My Biz Investment Group (ADNDRC Case No. HK-1000316, 13 December 2010, https://www.adndrc.org/hk/CaseStorage/HK-1000316/Decision/HK-1000316_Decision.pdf.).
59. In Changsha Gangwei Network Technology Co. Ltd. v. Feng Lei Zhang (ADNDRC Case No. HK-1500709, 21 April 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500709_Decision.pdf), the complainant operated an e-commerce business that involved trading of industrial steel products and the website was used as a selling platform. In registering its trademark, Changsha Gangwei Network Technology Co. Ltd. did not only use its Chinese name, but had added an abbreviation of its Chinese pinyin abbreviation “gtxh” as part of the graphic trademark. Although the disputed domain name www.gtxh.com did not actually contain the trademark of the complainant, it was held to be confusingly similar or identical to the complainant’s trademark. The panel reasoned that first, the pinyin abbreviation was associated with the complainant’s trademark as well as its website/products, and therefore should be considered as closely associated with the complainant’s businesses; and second, the pinyin abbreviation had no other meaning in the Chinese language. Therefore, a confusing similarity was found.
60. However, a domain name containing the complainant’s trademark and a commonly used pinyin abbreviation has been found by some panels not to be sufficiently similar to the trademark. In Shenma Mobile Technology v. Linshi Moban (ADNDRC Case No. HK-1700958, 31 May 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700958_Decision.pdf), the panel agreed that the complainant undisputedly was the right holder of the Chinese trademark “shenma”. However, the panel proceeded to state that in the domain name www.shenmady.com, where “dy” is the pinyin abbreviation of dianying meaning movie in Chinese, since “dy” is a commonly used Chinese pinyin abbreviation, the domain name “shenmady” had additional meanings and was not confusingly similar to the complainant’s “shenma” trademark.41
41 However, in Shenma Technology v. Wang Zihan (ADNDRC Case No. HK-1700969, 8 June 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700969_Decision.pdf), the panelist is of the view that www.shenmatv.com domain name is confusingly similar to the “shenma” trademark.
61. Descriptive terms, which could include length and amount of sales under such a trademark, the nature, geographical area and extent of advertising and media recognition of a brand name, are usually considered to make domain names have a “secondary meaning”. Characters of such additional terms usually impact the panel’s judgment. In general, for a domain name containing more than the complainant’s full trademark, the more such secondary meanings will be found to mislead potential consumers, the more likely they are held to be confusingly similar to the complainant’s original trademark. Therefore, it is usually a matter of assessing whether “similarity may give rise to confusion or false association.”42 Examples of descriptive terms that are usually found in domain names include, geographic descriptions (e.g., perkins-china.com, france- pandora.com), names that suggest affiliated services or products of the original trademark (e.g., suningceo.com, suningsports.com, baiduventure.com.cn), and positive or negative descriptions with no substantial meanings (e.g. tofelgo.com).
62. Geographical terms which are not registered as part of trademarks may still support a finding of confusing similarity if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the confusing marks.43 In Intercontinental Hotels Group v. Wang Yue Mei (ADNDRC Case No. HK-1500784, 22 October 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500784_Decision.pdf), the geographical identifier “binhaitiandi” was included in the domain name following the complainant’s renowned trademark “Crowne Plaza”, and was therefore found to possibly mislead consumers looking for a Crowne Plaza hotel in the “bin hai tian di” region. The panel ordered a transfer of the disputed domain name to the complainant. A similar holding was maintained in Intercontinental Hotels Group v. Lan Guo Jing (ADNDRC Case No. HK-1500783, 22 October 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500783_Decision.pdf) regarding the disputed domain name www.crowneplazalidu.com, in which “lidu” was the Chinese pinyin of a Beijing district in which a Crowne Plaza hotel can be found.
42 Todito.com S.A. de C.V. v. Affordable Webhosting Inc,WIPO D2004-0688.
43 WIPO Jurisprudential Overview 3.0 1.6.
63. A domain name consisting of descriptive terms that follow the trademark can be considered by panels to be confusingly similar, especially when they are suggestive and the complainant’s brand is particularly reputable in an industrial sector. In Marriot International Inc. v. Li Feng Jiao (HKIAC Case No. DCN- 1500649, 14 December 2015, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1500649_Decision.pdf), “editionhotel” was found to be similar to complainant’s registered trademark “Edition” in China. Due to Marriot’s global reputation as a hotel operation chain, “editionhotel” was found to be confusingly similar to “edition”. In Monster Energy Company v. Li Shijie (HKIAC Case No. DCN-1700732, 4 May 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700732_Decision.pdf), because the complainant’s company was engaged in the beverage production businesses and had registered “MONSTER” and “MONSTER ENERGY” trademarks in more than 120 countries including the People’s Republic of China, and the part following the trademark in the domain name “bevcorp” was the recognized English abbreviation of Beverage Corporation, the domain name www.monsterbevcorp.com.cn was found to be confusingly similar to the complainant’s trademark.
64. A domain name consisting of a common, obvious, or negative term, or of an intentional misspelling of the trademark is often considered by panels to be confusingly similar. In Westinghouse Electronic Corporation v. Chen Hongwei (ADNDRC Case No. HK-1500704, 22 March 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500704_Decision.pdf), the panel was of the view that the disputed domain name “westinghouseke” fully incorporated complainant’s registered trademark “westinghouse”. The panel found that the addition of letters “ke” at the end of “westinghouse” did not hide the fact that the spelling, pronunciation and overall appearance of the two were confusingly similar.
65. When domain names contain the complainant’s trademark in addition to a third party’s mark, the panel is usually of the view that such addition is insufficient in itself to avoid a finding of confusing similarity.44 In initiating such a proceeding, the consent of the third party mark holder is not required.
66. Sometimes, domain name registrants register domain names which combines two trademarks of companies pending a merger transaction. In Norton Rose Fulbright LLP v. Zuo Pan and Qinhuangdao Nuo Dun Luo Shi Fu Bu Lai Te IP Agency (ADNDRC Case No. HK-1500686, 16 March 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500686_Decision.pdf), the disputed domain names were found to be confusingly similar to the complainant’s “Norton Rose” trademark. While the complainant had only applied to register its trademark “Norton Rose Fulbright” to the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China at the time of filing the complaint, the domain name www.norton-rose-fulbright.com and www.nortonrose-fulbright.com were both found to be confusingly similar to the complainant’s trademark, based on the established business reputation of the British law firm Norton Rose and the American law firm Fulbright & Jaworski LLP before the merger of the two entities. The fact that these domain names were registered shortly before the merger was announced was found to support a finding of bad faith on the part of the respondent. 45
67. Typosquatting is defined as the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination. When it is clear that a registration of a domain name involves typosquatting, intent to take advantage of the trademark is implied. However, typosquatting is not always self-evident. Sometimes, words with minor lexical variation are considered distinctive in their own right.46
44 WIPO Jurisprudential Overview 3.0 1.11.
45 See also Dell Inc. v. Zhang Guojie (ADNDRC Case No. HK-1600924, 29 December 2016, https://www.adndrc.org/diymodule/docUDRP/HK-1600924_Decision.pdf), where a similar holding was issued by the panel.
46 See Novalash Inc. v. Novolash Cosmetics China (HKIAC Case No. DCN-1500616, 27 April 2015, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1500616_Decision.pdf).
68. The disjunctive “or” underlines a distinction between “right” and “legitimate interests”. Usually, a legal right arises because the respondent is the senior user of the disputed term that independently qualifies as a trademark, or because that the domain name registration precedes trademark acquisition47 A legitimate interest is something less than the legal right, and is usually conditional on continued use of the domain name in dispute.48 However, a mere showing of respondent’s registration of other related domain names will not give rise to rights or legitimate interests.49
69. Usually, when a domain name is registered before the trademark is registered, the domain name holder has a right in the domain name. On the other hand, if a domain name is registered later than the trademark, respondent’s legal rights or interests only arise when the respondent is the senior user of the disputed domain name that independently qualifies as a “trademark”. However, the burden is shared and complainants initiating a proceeding must prove that they have a right to maintain the proceeding by disputing the respondents’ rights or legitimate interests. Only establishing a registered trademark does not automatically fulfill the complainant’s burden of proof under UDRP 4(a)(ii).
70. In KHL Printing Co Pte. Ltd. & Asian Geographic Magazines Pte Ltd. v. Chong Seat Au (ADNDRC Case No. HK-1400569, 5 April 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1400569_Decision.pdf), the second complainant, Asian Geographic Magazines Pte. Ltd., was a subsidiary of the first complainant, and it held an exhibition under the service mark “Asia Dive Expo” based on a licensing agreement. The first complainant KHL Printing Co Pte. Ltd. registered the trademark “Asia Dive Expo” in Singapore in 2006, and the respondent in this case first registered the disputed domain name www.asiadiveexpo.com in 2002, which was before the date that the trademark was registered. In addition, the website that the disputed domain name resolved to had been used to advertise exhibition events for diving related activities in Singapore and China since its registration, and was constantly updated. The panel stated that “the mere fact that a trademark has been obtained by a complainant is not an absolute right accruing to a complainant to succeed under the UDRP” and rejected the complainant’s claim. In Merck Sharp & Dohme Corp v. Huang Zhong and Merck Sharp & Dohme (Wuhan) Health Co. Ltd. (ADNDRC Case No. HK-1400661, 21 December 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1400661_Decision.pdf), the panel considered that although the American medical corporation Merck Sharp & Dohme Corp had registered and established global reputation in its “MSD” trademark, the respondent Merck Sharp & Dohme (Wuhan) Health Co. Ltd. was an existing entity and was known in China for producing Chinese synthetic drugs and other health care products. Therefore the complainant failed to prove that the respondent has no legitimate right in its registered www.msdwh.com domain name.
47 Levine, at 173.
48 Levine, at 182.
49 See e.g., Sichuan Chaofan Intellectual Property Intellectual Property Company v. Liu Defeng (ADNDRC Case No. HK-1700962, 7 June 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700962_Decision.pdf), compliant rejected.
71. After the complainant is able to establish its prima facie case, the respondent needs to satisfy its burden by demonstrating that it has either rights or legitimate interests in the domain name, in accordance with UDRP 4(c) (ii). Some enumerated circumstances in the policy have helped to clarify what rights or legitimate interests the domain name holder can establish: i) a domain name has been used in connection with a bona fide offering of goods or services; ii) an individual or business or other organization has been commonly known by the domain name; iii) and the domain name holder is making a legitimate non-commercial or fair use of the domain name without intent to mislead consumers or to tarnish the complainant’s trademark. However, possessing a trademark based on the domain name does not always help respondents to establish their rights or legitimate interests. In Universal City Studios LLC v. Zhang Yu (ADNDRC Case No. HK-1400582, 22 April 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1400582_Decision.pdf), respondent registered the Chinese character trademark of Beijing Universal Studios ( 北京環球国际影视工作室 ) after registering the disputed domain name www.beijinguniversalstudios.com in 2013. Nonethless, the panel in this case was not persuaded that the respondent had rights or legitimate interests in the domain name because 1) the Chinese trademark was registered after the respondent obtained the disputed domain name; and 2) commercial values associated with the disputed domain name was not related to the respondent’s continued business operation and was mostly derived from the complainant’s international brand reputation.
72. A legitimate interest by the original registrant is an interest acquired over time by the legitimate use of the domain name, which typically arises from the use of the domain name through authorization or prior permissive use. Where the complainant’s own actions created circumstances from which the respondent could reasonably conclude its conduct was permitted, it would be difficult to find a violation of the Policy. Contractual terms that expressly permit a respondent to use an owner’s trademark and provide for its return upon termination of services are conclusive against a respondent’s claim of good faith registration. Upon termination of the agreement, voluntary transfer of the disputed domain name to a complainant is most likely where the complainant’s contract expressly prohibits a respondent from using the trademark in any domain name without the complainant’s permission. However, once an agreement is terminated, subsequent registration of a domain name incorporating the complainant’s trademark is usually considered fraud, or at least conclusive in showing bad faith.50
73. In Chris Duane v. Rob Gray (ADNDRC Case No. HK-1400671, 27 January 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1400671_Decision.pdf), the complainant’s claim was dismissed based on lack of clarity in the business relationship between parties. Although complainant was able to show that it had registered the trademark “Silver Bullet Shiver Shield” in the United States and possessed a possible claim of common law trademark through usage, there was a disagreement between parties as to the nature of their business relationship. According to the panel in this case, since domain name dispute resolution proceeding was a forum for clear-cut cases of cybersquatting and not a forum to resolve complicated intellectual property matters involving a full presentation of both parties’ conflicting evidence, the parties in this case had prior legal matters that needed to be resolved which were beyond the scope of t he UDRP. Based on that, the panel dismissed the complainant’s claim.
50 Levine, at 273-74.
74. It is generally agreed that lack of rights or legitimate interests in the domain name by itself is insufficient to establish bad faith. Bad faith rests on the proof of past and present intentional or willful acts by the respondent in violation of the complainant’s trademark rights. In domain name dispute resolution proceedings, the complainant has the burden to prove it in its establishment of the prima facie claim of bad faith, and prevails only on proof that respondent has both registered and is using the domain name in bad faith.
75. Bad faith registration is harder to prove than bad faith use. The consensus is that domain name registration predating the trademark acquisition negates intent to take advantage of complainant’s trademark. The second conjunctive requirement implies a present use. As a general rule, the use of the domain name is considered first, except in those instances where the domain name was registered prior to the complainant acquiring its trademark. If the use to which respondent has put the domain name at any time infringed complainant’s rights, there is a stronger probability that the respondent had intended to mislead internet users right from the date of registration.51 For example, in Shenzhen Hongfeng Century Technology Co. Ltd. v. Viofo Ltd. (ADNDRC Case No. HK-1700973, 12 July 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700973_Decision.pdf), the complainant registered its trademark “SJCAM” on 15 May 2015, and the respondent registered its domain name www.sjcam.com on 11 December 2013. The panel was of the view that “where a respondent registers a domain name before a trademark, Panelist will not normally find bad faith on the part of the respondent.” However, the panel also stated, “in certain circumstances where the respondent’s intent in registering the domain name was to unfairly impinge on the complainant’s unregistered trademark rights, panels have in previous cases found the existence of bad faith on the part of the respondent.” In this case, the panel was not satisfied with the complainant’s proof that the “SJCAM” trademark was well known before the date of the registration of the disputed domain name www.sjcam.com, and therefore dismissed the claim because of the respondent’s bad faith.
51 Levine, at 214-15.
76. UDRP 4(b) provides elements based on which an inference of bad faith registration or use can be made. These elements include, but are not limited to: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark or service mark; (ii) you registered the domain name in order to prevent the owner from reflecting the mark in a corresponding domain name; (iii) you registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) you intentionally attempted to attract, for commercial gain, internet users to your website by creating a likelihood of confusion with the complainant’s mark. At the same time, it is not respondent’s burden to disprove that it registered and is using the domain name in good faith, but it is a good opportunity to refute the complainant’s claim in its response. Some evidence which an innocent respondent might find useful includes that the timing of a complainant’s trademark registration/acquisition is later than the domain name registration, its own proper conduct or acts, and the manner in which the domain name or its linked website is used.
77. The time of registration is crucial in determining bad faith. Usually the critical date for determining whether a domain name has been registered in bad faith is the original date of registration. The general consensus is that a renewal of registration represents a continuation of registration, and is not a restart of the registrant’s representation and warranty covenants.52 However, transfer of the domain name to subsequent holders, which usually involves direct sales or auction of a domain name on the secondary market, has been considered a new registration. In Beijing Suning Shangpin Appliance Co. Ltd. v. Eryue (ADNDRC Case No. HK-1500764, 17 September 2015, https://www.adndrc.org/diymodule/docUDRP/HK-1500764_Decision.pdf), the panel stated that even if the predecessor has previously used the domain name in good faith, this good faith can not be carried over to cover acts of the subsequent domain name purchaser.
78. Sometimes, a transfer occurs between commonly controlled persons, or the strawman identity of the same person. A transfer between commonly controlled entities is usually not considered a new registration. In Airbnb Inc. v. Guo Lanzhi (HKIAC Case No. DCN-1700742, 3 July 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700742_Decision.pdf), the respondent argued in its response that while the WHOIS record suggested that a transfer had occurred between parties, the transferor Yang Hongjuan and the transferee Guo Lanzhi were two different web names used by the same person. Therefore, a transfer between Yang Hongjuan and Guo Lanzhi should not be considered a transfer that could reset the registration date. The argument was not accepted by the panel because based on prima facie evidence submitted by parties, the two different names did not seem to represent an existing commonly controlled entity.
79. Bad faith usually requires the registrant to have actual knowledge of the complainant and its trademark, which implies a form of opportunism embraced by the cybersquatting communities. Therefore, for well-known and famous trademarks, bad faith is most often assumed.53 In UDRP jurisprudence, panelists have generally rejected arguments that respondents’ registrations are protected under the “first come first served” doctrine, which only applies where respondent’s evidence supports a priority of right and refutes bad faith registration regardless of whether it lacks legitimate use, i.e., when respondent derives revenue potential or commercial value directly from its domain name rather than the complainant’s trademark.
80. Usually, no bad faith can be inferred from a domain name legitimately used in the past and present, and properly holding a domain name for its appropriate commercial use is usually sufficient to avoid a finding of bad faith. Disclaimers on websites which are commonly used in this region do not usually settle the question of good faith and in most instances they tend to even underline respondent’s bad faith where their domain names resolve to websites whose content is inconsistent with its profession of good faith.
53 Levine, at 258.
81. Infringement may be inferred where respondent passively holds a domain name registered after complainant’s acquisition of rights and offers it to complainant at a price in excess of its out-of-pocket costs. Passive use is itself a category distinct from legitimate inactivity in the UDRP vocabulary. While mere failure to maintain an active website at a domain name does not automatically result in a finding of bad faith, passive holding over a period of time is usually evidence of illegitimate use. In a WIPO decision Telstra Corporation Limited v. Nuclear Marshmallows,54 the panel formulated a famous five-part test to determine whether passive holding of a domain name proves bad faith, which has generally been followed by HKIAC panelists. “Coming soon” announcements have also been found to constitute bad faith.
82. HKIAC jurisprudence suggests that there is a common theme in losing domain names by hacking of the registrar. This usually happens when a domain name formerly registered in complainant’s name is later found to be in another’s hands. Acquiring a domain name through hacking is conclusive of bad faith. In an 2013 case Teenee Media Company Limited v. Linda C.Austin (ADNDRC Case No. HK-1300566, 14 March 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1300566_140324161356_HK-1300566_Decision.pdf), the complainant registered the disputed domain name www.teenee.com in 2001 and had never transferred it. However in 2013 the disputed domain name was illegally transferred into the name of the respondent, who had no rights or legitimates interests in the disputed domain name. The panel ruled in favor of the complainant.
83. In Dracco Company Limited v. Whoisguard (ADNDRC Case No. HK- 1400580, 15 April 2014, https://www.adndrc.org/diymodule/docUDRP/HK-1400580_Decision.pdf), complainant was the registered proprietor of the trademark ‘Angelove’ and registered the disputed domain www.angelove. com. However, the domain name was later illegally removed from the registry of GoDaddy by hackers. It was contended that respondent in this case then improperly registered the aforesaid domain name. Bad faith was found in this case and the panel decided that the domain name should be transferred to the complainant.
54 Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO 19 February 2000).
84. Concealing an owner’s registration by registering through privacy or proxy services is not by itself recognized as evidence of bad faith.55 It is common that the true identity of the registrant is not disclosed, but HKIAC only accepts the respondent’s identity as shown in the registrar’s registration document. In NBA Properties Inc. v. Adam Zhang (ADNDRC Case No. HK-1700944, 2 March 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700944_Decision.pdf), although respondent argued that the beneficial owner and the respondent in this case were not the same entity, the panel was of the view that respondent did not have to have actual notice of the NBA trademark before registering the disputed domain name. The reputation of the “NBA” trademark is notorious and respondent “knew or should have known of” the existence of the NBA trademark. Nevertheless, there was no need to deal with the relationship of the alleged beneficial owner and respondent in this case as responses were properly filed.
85. High-volume registrants are commonly seen in HKIAC cases. While neither the WIPO Final Report nor the ICANN report implementing the UDRP distinguishes different classes of registrants, panelists in this region are accustomed to apply a stricter standard, finding bad faith for respondents that are engaging in this business of acquiring, monetizing and selling domain names (known as domain name investors). Such a finding, “may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.” In HKIAC cases including Regeneron Pharmaceutical, Inc. v. Yu Tao (ADNDRC Case No. HK-1700967, 19 June 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700967_Decision.pdf), Deputy Synthes Inc. v. Synthes GmBH (HKIAC Case No. DCN-1700735, 22 May 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700735_Decision.pdf), Corporation Service Company v. Wu Jie (HKIAC Case No. DCN-1700728, 10 April 2017, www.hkiac.org/sites/default/files/ck_filebrowser/IP/cn/decision/DCN-1700728_Decision.pdf) and many others, respondents’ multiple registrations were considered to suggest bad faith.
55 Levine, at 226.
86. UDRP paragraph 4(b)(iii) is directed at respondents who purchase domain names “primarily for the purpose” of disrupting the business of a competitor. The rule prescribes that unfair competition and deception by a registrant appropriating another’s sign for its own business usually constitutes bad faith. In Village Road Show Theme Parks PTY Ltd v. Kang Ma (ADNDRC Case No. HK-1700977, 10 July 2017, https://www.adndrc.org/diymodule/docUDRP/HK-1700977_Decision.pdf), the respondent had in its website forged information in order to mislead consumers to believe that the website belonged to the complainant’s Wild Haikou Water Park in Haikou, China. The panel agreed that the respondent registered the domain name in order to derive commercial revenues from misleading consumers to purchase forged tickets from its website, therefore disrupting the business of the complainant. The panel decided that the disputed domain name should be transferred to the complainant.
HKIAC Administrative Fee Schedule
In initiating domain name dispute resolution proceedings administered by the HKIAC, a HKIAC administrative fee is required to be submitted together with a complaint form. Details of the HKIAC fee schedules in UDRP/CNDRP/HKDRP cases are as follows:
|Number of Domain Names involved in the Complaint||Fee|
|Single Panelist||Three Panelists|
|Administrative fee||Panelist fee||Administrative fee||Panelist fee|
|1 to 2 domain names||US$600||US$700||US$600||Presiding Panelist:US$1,000 Each Co-Panelist: US$600|
|3 to 5 domain names||US$700||US$900||US$700||Presiding Panelist:US$1,200 Each Co-Panelist: US$700|
|6 to 9 domain names||US$700||US$1,100||US$800||Presiding Panelist:US$1,400 Each Co-Panelist: US$6800|
|10 domain names or more||(to be determined by the relevant office of the ADNDRC)|
|Number of Domain Names involved in the Complaint||Fee|
|Single Panelist||Three Panelists|
|Administrative fee||Panelist fee||Administrative fee||Panelist fee|
|1 domain name||RMB4,000||RMB4,000||RMB6,000||
Presiding Panelist: RMB4,000
Each Co-Panelist: RMB2,000
|2 to 5 domain names||RMB6,000||RMB6,000||RMB8,000||
Presiding Panelist: RMB6,000
Each Co-Panelist: RMB3,000
|6 to 9 domain names||RMB8,000||RMB8,000||RMB9,000||
Presiding Panelist: RMB7,000
Each Co-Panelist: RMB4,000
|10 domain names or more||(to be determined by HKIAC)|
|Number of Domain Names involved in the Complaint||Fee|
|Single Panelist||Three Panelists|
|Administrative fee||Panelist fee||Administrative fee||Panelist fee|
|Presiding Panelist: HK$7,500|
Each Co-Panelist: HK$3,750
For further information relating to dispute resolution in Hong Kong, please contact:
Hong Kong International Arbitration Centre 38th Floor Two Exchange Square
8 Connaught Place Hong Kong
Tel: (852) 2525 2381 | Fax: (852) 2524 2171
E-mail: email@example.com | www.hkiac.org