8 October, 2016
Unlike the Uniform Domain Name Dispute Resolution Policy (UDRP), the CNNIC ccTLD Dispute Resolution Policy (CNDRP) – the dispute resolution policy governing the “.cn” domain in China – sets a time bar which stipulates that no complaints concerning a “.cn” (or “.中国”) registration of over 2 years will be accepted. This time bar has in the past been criticised for imposing “unreasonable time limits” that would prevent the fair and equitable enforcement of intellectual property rights.
The history of this 2-year time bar can be traced back to 2000 when CNNIC developed its very first set of domain name dispute resolution rules. It has been widely perceived as an absolute time bar which immunes all “.cn” registrations of more than 2 years old from domain name complaints under CNDRP. In those situations the complainant would often have to resort to litigation or negotiations in order to recover the domain name.
However, in a case before the Hong Kong International Arbitration Centre (case number: DCN-1500641), the sole panelist considered that the transfer of a “.cn” domain name can amount to a new registration and thus re-setting the 2-year time bar. The domain name in question was first registered in 2006. The Panel found in favour the Complainant and ordered that the domain name be transferred to the Complainant.
The Complainant in this case, Leister Brands AG, is a Swiss company specializing in plastic welding, process heat and laser plastic welding technologies. The Respondent is a Chinese individual by the name of “Chen Qiuheng”. The disputed domain name <leister.net.cn> was first registered in 2006 by a Chinese company named Guangzhou Danlai Welding Machine Co. Ltd (Guangzhou Danlai).
The Complainant’s case was that since registration the domain name had been used to mislead customers that Guangzhou Danlai was affiliated with the Complainant. The Complainant first commenced court proceedings in China against Guangdong Danlai in June 2015. In the course of the court proceedings, the Complainant found out that the domain name was transferred to the Respondent in this case in around mid-2016. The Complainant contended that the Respondent is closely related to Guangdong Danlai and the transfer should be regarded as a new registration in bad faith.
The Panel made a preliminary ruling that the 2-year time limit does not bar the filing of the complaint. The Panel decided that the transfer of the disputed domain name did amount to a new registration, for the following reasons:
1. Among the four circumstances of bad faith registration or use of a domain name under Article 9 of CNDRP, the first and the third circumstance both include the reference to “acquiring” a domain name. Hence, the intention is that CNDRP should apply as long as the Respondent was acting in bad faith, regardless of whether the Respondent obtained the domain name by registration or by transfer.
2. The Panel applied the consensus view of WIPO panelists in WIPO Overview 2.0, which states that “Transfer of a domain name to a third party does amount to a new registration. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”
3. If the 2-year time limit is considered an absolute bar, this would encourage illegitimate domain name registrations.
4. There would be no injustice to the Respondent because the Complainant would still have to prove its case on merits under the 3 elements of CNDRP (similar to UDRP) in order to succeed. Furthermore, the interpretation of the 2-year time limit would not deprive either party from its rights to appeal the CNDRP decision to a competent court.
After making this preliminary ruling, the Panel went on to discuss the substantive merits of the complaint and found in favour of the Complainant.
This is an interesting decision and offers a silver lining to trade mark owners who thought they might have been barred from submitting a domain name complaint under CNDRP when trying to recover a “.cn” domain name of more than 2-years. We consider this decision to be a liberal reading of the 2-year time bar under CNDRP and one which is commendable in following the spirit of UDRP. However, as mentioned, this 2-year time bar has a very long history in CNDRP so we would suggest that this decision be read on its specific facts. It remains to be seen whether this decision would be followed in future CNDRP decisions and whether CNNIC would clarify the meaning of the 2-year time bar.
First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.
