HKIAC Domain Name Dispute Resolution: Quarterly Update

PRESS RELEASE
HKIAC Domain Name Dispute Resolution: Quarterly Update

HKIAC is pleased to provide an update on its domain name dispute resolution work for the past quarter covering case statistics, insights from recent cases, and webinars.

2020 HKIAC DOMAIN NAME DISPUTE STATISTICS

As at 9 December 2020, 135 domain name disputes have been submitted to HKIAC. 72% (97) were filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), i.e., they involved generic Top Level Domains (or “gTLDs”) such as .com, .net, .org. 24% (32) were filed under the China Domain Name Dispute Resolution Policy (CNDRP), i.e., they involved .cn and .中国 domain names. 4% (6) were filed under the Hong Kong Domain Name Dispute Resolution Policy (HKDRP), and thus involved .hk and .香港 domain names.

Parties from 32 jurisdictions have been involved in HKIAC cases with parties from Mainland China and the United States ranking first and second respectively, which is consistent with 2019 data. Remedies have been granted to complainants in 95% of the cases decided by panels, resulting in the transfer of disputed domain names under various policies.

INSIGHTS FROM RECENT CASES

Globally recognised brands and service marks

HKIAC frequently administers domain names disputes in respect of globally recognised brands and service marks. A recent example concerns the complaint filed by Bytedance Ltd, owner of TikTok, regarding <tiktoksupportcenter.com> in which it sought the transfer of the disputed domain name. In the decision, the panelist held that the disputed domain name reproduced the complainant’s trademark, TIK TOK, in its entirety and combining the trademark with the descriptive terms “support center” was not sufficient in this case to distinguish it from the trademark. Read more about the decision here.

Doctrine of passive holding

In a complaint filed by 广州阿道夫个人护理用品有限公司 regarding <adolph.com.cn>, the respondent claimed that the disputed domain name had never been used for any commercial purpose, nor had the respondent attempted to sell it to any competitors. In the decision, the panelist held that passive holding of a domain name did not prevent a finding of bad faith under the doctrine of passive holding. Read more about the decision here (Chinese language decision).

Trademarks registered in multiple countries

In a case involving <cfmotor.cn> filed under the CNDRP, the complainant had registered a number of CFMOTO-related trademarks in Mainland China and other countries. In this case, the panelist held that only the trademarks registered in Mainland China would be considered given the application of the CNDRP. Therefore, when rendering the decision for this dispute, the panelist compared the disputed domain name <cfmotor.cn> and the complainant’s trademark “CFMOTO” registered in Mainland China only. Read more about the decision here (Chinese language decision). 

HKIAC DOMAIN NAME DISPUTE RESOLUTION WEBINARS

HKIAC held a series of English and Chinese language webinars on domain name dispute resolution from June to November 2020. The series of webinars included an introduction to domain name dispute resolution and covered the three elements that must be proven to successfully challenge the use of a domain name. The series involved 21 speakers, and attracted 660 attendees from 35 jurisdictions. HKIAC was grateful to have the support of ICANN, HKIRC, the Intellectual Property Department of the HKSAR Government, INTA, the China Legal Executive Council, and the Legal Executive Board. Further information and links to the recordings of each webinar can be found below.

ABOUT HKIAC DOMAIN NAME DISPUTE RESOLUTION

HKIAC provides comprehensive online dispute resolution services for resolving domain name disputes arising out of gTLDs, new gTLDs and country-code Top Level Domains (ccTLDs). HKIAC has one of the largest caseloads in Asia. Since 2001, HKIAC has handled more than 2,500 domain name cases under six different policies.

HKIAC is a founding member of the ADNDRC which was established in Hong Kong in 2001. The ADNDRC is a UDRP service provider accredited by ICANN. HKIAC operates the Hong Kong office of the ADNDRC.

Contact
Cordelia Cheng, Case Manager
Hong Kong International Arbitration Centre
Tel: +852 2912 2235
Email: cordeliacheng@hkiac.org

Tom Leung, Case Manager
Hong Kong International Arbitration Centre
Tel: +852 2912 2230
Email: tleung@hkiac.org