This entry was posted on Friday, February 23rd, 2018 at 1:33 pm and is filed under Brand Protection, Trademark Protection. You can follow any responses to this entry through the RSS 2.0 feed. Both comments and pings are currently closed.
Unlike a lot of arbitration policies, Chinese extensions such as ‘.CN’ restrict complaints that involve domain names which have been in existence for longer than two years. The legal framework which applies this principle is laid out in Article 2 of the CNNIC Domain Name Dispute Resolution Policy. Specifically:
‘The policy is applicable to disputes result from registration or usage of domain names. The disputed names shall, within the range of “.CN”, “.中国” domain names that were under the administration of China Internet Network Information Center (CNNIC). However, the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term of over TWO years.’
The foundation of the two-year time bar derives from Chinese civil actions, specifically the General Civil Law Rules of the People’s Republic of China, which before March 2017, adopted a two-year time bar for civil actions. This principle was subsequently amended after March 2017, to increase the two-year time bar to three years. The recent changes under the civil code have also prompted consideration of the time bar in domain disputes, although nothing is set in stone so far. While some might welcome the slight increase of the time bar, removal of the limitation altogether would perhaps be more in tune with other similar policies, such as the UDRP, which at the moment, does not prohibit a complainant from filing after a set period.
One principle which has already proven to be valuable for brand owners, is the ability of a Panelist under the CNDRP, to take into account new acquisitions of domain names as fresh registrations, falling in line with the guidelines in WIPO Overview 3.0. Specifically guideline 3.9, which discusses a new acquisition of a domain name in relation to Policy Paragraph 4(a)(iii), relating to bad faith registration and use:
‘…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions.’
Under the CNDRP, case law has arguably been the main authority when looking at issues relating to the two-year time bar. The case of Leister Brands AV v. Chen Qiuheng DCN-1500641 is a particularly useful case on this topic, where the Panelist discussed the significance of a domain acquisition being akin to a new registration, as it requires similar processes and procedures. Following the case of Leister, there have been several follow-up cases, including Safenames’ most recent decision; Bulgari S.p.A v. 徐东彦 Case No. DCN-1700789. In this decision, the Panel discussed, at length, the applicability of the Leister case as well as other supporting factors. Such discussions included the trend adopted by WIPO’s Overview and the need for consistency in CNDRP decisions, even though the CNDRP, by nature, does not conform to following case law as precedent in domain disputes.
Overall, we can begin to see how attitudes are changing in the CNDRP, meaning that complaining parties have more scope to file complaints, even if they exceed the two-year time bar. However, the issue remains that parties are barred from filing claims, even if there is a clear case of abuse in the registration or use of a domain name. This author, in particular, sympathises with a lot of brands who face egregious cases of cybersquatting, but due to the two-year bar, cannot proceed with a complaint.
Only time will tell, whether or not complaints under the CNDRP will give more leniency to these type of cases. For now, brand owners can take some solace, knowing that a claim is not written off forever if it has been registered for longer than two years. A suggestion for brand owners at this stage would be to monitor infringing domain names which exceed the time bar to see if the Registrant details change hands later on.
If you need advice on the two-year time bar, or domains involving the .CN extension, you can contact our Brand Protection department or your Account Manager for further information.
Author – Dan Smith