(By Albert Chen) Our website has introduced readers to the dispute between Ms. Yue and Mr. Zhou Libo, a popular talk show act in China. Yue, the plaintiff, lost the case in the first instance, because the court decided that her domain name registration was likely infringement, and that the domain name shall be Zhou Libo’s property. Yue subsequently appealed to a higher court, and the court in the second instance also refused her demands.

Today, our website would introduce to our readers the standards and methods utilized in determining when infringement involving conflicts between domain name owners and a well known name occurs, based on the judgments of the first and the second instance courts.

Case summary:

On October 7^, 2007, Yue applied for the domain name “zhoulibo.com” (the “Website”) in the name of Hong Yi Sheng through a registration agency overseas. After that, the Website published an announcement that it was intending to sell the domain name, and also it expressed that the domain name was suitable to be used by Mr. Zhou Libo, and therefore they would like to see Zhou step up to purchase the domain name. The domain name was then offered for sale for more than RMB 100,000 (a little over USD $16,000). A link to a third-party sales platform was provided to facilitate the intended domain name transaction.

With the understanding that the domain name registration had infringed his lawful interests over the pinyin spelling of his name “zhoulibo,” and that the open sale of said domain name was malicious, Zhou notarized the announcement on the Website, and filed a complaint with the Asia Domain Name Dispute Settlement Center (the “ADDSC”) to demand ownership rights over the domain name. Yue attended the complaint in the name of Hong Yi Sheng, and defended herself in stating that the information regarding the transaction uploaded to the website was unlicensed and made by another party, and that such information had been deleted by the third party platform after proving it to be false. In the case, she also presented a statement from the platform to prove what she said. After the hearing, the ADDSC decided that the confusion between the pinyin “Zhoulibo” and the domain name of the website is most likely to be mistaken by the public, and that “Hong Yi Sheng” has no lawful rights over the domain name, and in further consideration of the malicious intention showed in the attempted sale of the domain name, the domain name registration and ownership  shall be transferred to Zhou.

After the decision made by the ADDSC, Yue filed a lawsuit in the Shanghai No.1 Intermediate People’s Court (the “Shanghai Intermediate Court”) in her own name, demanding to exercise what she believed her lawful rights were over the disputed domain name. After its hearing, the court concluded the following two areas of focus: 1. Whether Yue is in fact the registrant of the Website; and 2. Whether the website shall be deemed to be Yue or Zhou’s property.

With regard to the first issue, the court decided that Yue properly stood as the plaintiff, as proven by the contact information presented, including payment information provided by Hong Yi Sheng that Yue applied for the domain name, and stated the rule that there are no requirements that a domain name must be registered in one’s actual name.

In regard to the second issue, by the Interpretation on Several Issues concerning the Application of Law in Hearing Civil Disputes about Computer Network Cases by the Supreme Court (the “Interpretation”), the Shanghai court exmained:

 

1. Whether the plaintiff had the lawful rights over the domain name or the main part of it, and whether it had a solid reason to file the domain name application;

 

2. Whether the defendant had the lawful right over the name and the corresponding pinyin;

 

3. Whether the domain name or the main part of it would be mistaken by the public with the pinyin of the name as they resemble each other or are nearly the same; and

 

4. Whether the plaintiff has evidenced malicious intent in using and applying for the domain name.

In regard to the four inquiries stated above, the Shanghai Intermediate Court determined that: first, the registration of the domain name produced no rights or interests simply due to the conduct itself, and that the plaintiff could not prove she had publicized the renowned and same-named author Zhou Libo before the conflict occurred; second, the acts Zhou Libo had performed in several popular films and remedies, especially after 2006, when he introduced all his new talk show, Zhou Libo were well known throughout China. The “zhoulibo” contained in the domain name is corresponding to the pinyin of Zhou’s name, and therefore it could conclude that Zhou enjoyed rights over the main part of the domain name; third, that the main part of the domain name is the same as that of the pinyin of Zhou’s name, and that most people would believe there was an association between the two, with the announcement published on the Website confirming that association; and last, that the open sale of the Website could prove the requisite malevolent intent. Based on these grounds, the court determined the domain name to be Zhou’s property.

Yue appealed to the higher court because she was not satisfied with this decision, and in the appeal she stressed that in addition to the correspondence between “zhoulibi” and the pinyin “zhoulibo,” through her long-term operation of the Website introducing the writer Zhou Libo, she should have rights over the Website. Moreover, she applied for the domain name before Zhou was well known, and has never put it up for sale.

The Shanghai Higher People’s Court (the “Shanghai Higher Court”) first confirmed Zhou’s rights over the domain name; as provided in the Anti Unfair Competition Law and related judicial interpretations, a renowned individual may have protectable rights over his/her names. Zhou Libo has been performing in the name of “Zhou Libo,” and that makes the name and the pinyin of it renowned among the public. To only consider the correspondence between the name and the pinyin, Zhou Libo should also have rights over the pinyin, and his popularity would make the public associate the pinyin of his name with the domain name. Also, the court confirmed that despite the law not demanding previous rights for a domain name registration, application of a domain name should not damage any others’ rights.

In terms of the domain name application by the plaintiff herself, she made only two updates in four years of holding and operating the domain name, and one of the updates was made after Zhou Libo filed a complaint. Therefore, the court found that the plaintiff had not submitted any evidence as to her intent, and therefore she could not demonstrate her rights over the domain name.

As for the determination of malicious intent on behalf of the plaintiff as evidenced in the sale of the domain name, the statement from the third party platform shall only be taken as witness testimony, and cannot be used to prove facts. And as Yue had presented no other evidence to the contrary, and she would be the only beneficiary of the sale of the domain name, the court found malicious intent in the registration and use of the website. Therefore, the second instance court sustained the original judgment.

Lawyer Comments:

In this case, the Interpretation was mainly adopted to determine the conflict between a domain name and name rights. And the interpretation by the judge on the four conditions in the Interpretation is very valuable, therefore the author concludes and completes them as follows:

1. The law has not provided any specific methods to define whether the plaintiff has a fair reason to register and use the domain name, and the hearing court decided “the registration of the domain name demands no connection of the civil rights enjouyed by the plaintiff over it or any other connections”. This opinion has also been stressed by Beijing court in the dispute of jumeirah.com.cn conflicting trademark Jumeirah. That shows this line of reasoning has been accepted by both the courts in both northern and southern regions.

In fact, other than a few situations (like when a website is applied by the name, trademark holder or their associate parties), application of a domain name does not require previous rights in the name. A fair reason for registration comes from fair use after the application, which includes maintenance or updates. In this case, Yue only updated the domain name two times during her four years’ holding, and one of them was made after Zhou Libo’s complaint, thus disproving the legitimacy of her application.

2. For the problem that whether the name holder has the righr over the name pinyin, to say it objectively, there is the sole corresponding relation between the individual name and the pinyin. And that relation could transfer the civil rights once the public could associate them, and that association comes from the extend of the reputation. In the case, Zhou Libo has accumulate himself wide social reputation after 30 years’ performance, especially after 2006 when he introduced the public his talk show. Then, the public is inevitable to associate the domain name with Zhou. The demonstration of the “zhouilibo” using further proves that relation.

But it shall also to our consideration that in the case the writer Zhou Libo, as used by Yue to argue her right over the domain name, is also popular in the certain public. Strictly, the accepting public of writer Zhou is obviously different from that of act Zhou, and both accepting group would not mistake two Zhou. If not Yue is confirmed his malicious intention as approved by his sales, which confirms his lack of legitimacy of the domain name application, and the rare operation which makes her lack of reasonability, Yue’s claim could also established.

Lawyer Contacts

You Yunting：86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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