By Albert Chen

In the first half of this year, our website posted an essay discussing the domain name dispute heard in the Shanghai No. 2 Intermediate People’s Court (“Shanghai Court”) concerning the renowned comedian Zhou Libo. Recently, the Beijing No. 1 Intermediate People’s Court (“Beijing Court”) decided a very similar case. Yet there were very different standards used to decide the different cases in Beijing and Shanghai. The most critical point is the determination of whether, after receiving the invitation to buy the domain name, the rights holder had bad faith during registration and use of the domain name.

I. The standard adopted in Zhou Libo case

First, let’s review the facts and judgment standards of the Zhou Libo case. Zhou Libo was originally a well-known local comedian in Shanghai. With the introduction of his talk show in 2006, his reputation quickly spread through the entire country. In 2007, Ms. Yue registered zhoulibo.com to introduce another renowned Zhou Libo—a famous modern writer. But, the comedian Zhou Libo believed Ms. Yue’s application would cause confusion and thereafter filed a lawsuit.

After the hearing, the Shanghai court found that Ms. Yue lost the case, primarily basing its judgment on the Interpretations on Several Issues Concerning Law Application in Civil Cases Concerning Computer Network Disputes by the Supreme People’s Court (“Domain Name Interpretation”). The Court primarily acted in accordance with the four following standards:

1) Whether the right holder of the domain name had legal interests in the domain name or its main parts, and whether he/she had legitimate reasons to register or use the domain name;

2) Whether the other party enjoys any name rights or trademark rights in the domain name or its main words;

3) Whether the domain name or its main words lead to public confusion or mistake;

4) Whether there was bad faith on the part of the right holder when it registered or used the domain name.

Among the above standards, the Shanghai Court held that for “the legitimate reasons to register and use the domain name,” the registration itself could not produce any rights or civil interests, and that the right holder needed to provide evidence of these rights and interests. As to determination of bad faith, the decision from Shanghai Court was mainly based upon Article 5(1)(3) of the Domain Name Interpretations.

II. The judicial standard held by Beijing Court

In the similar case in Beijing Court, the plaintiff was Jumeirah a famous international hotel management group. In November 2001 and January 2006, Jumeirah registered its name as a trademark in five classes. The defendant, Xia Qian, registered the domain name of jumeirah.cn in March of 2006. Jumeirah believed that Xia Qian’s actions infringed its legal rights and filed a lawsuit against Xia Qian demanding the revocation of the domain name or transfer of it to Jumeirah.

The Beijing Court also relied on the Doman Name Interpretation to resolve the case, but it ultimately refused the plaintiff, Jumeirah’s, claims. The Court’s main deliberations in adopting the four conditions are as follows:

1) The trademark holder could have the exclusive right in the registered classes of the product and service, but outside that legally protected scope, it has no way to stop other’s using on the words in the trademark. That is to say, according to the Beijing Court, the domain name right holder naturally gains civil rights after the registration and use, and does not need to other demonstration or proof of legitimate reasons.

2) As to the determination of bad faith, the Beijing Court believed that because the defendant did not actually use the domain name after registration, it could not legally determine the bad faith of defendant blocking Jumeirah’s registration or place the defendant’s actions within the category of bad faith. Moreover, because the defendant never made any active offer to Jumeirah for the domain name transaction, the condition of “high costive offer” could not be applied either.

III. Author’s opinions

Basing on analysis and comparison of the two courts, it is clear that the Domain Name Interpretations is the main legislation to be considered in such conflicts. The understanding of these two large courts, however, is clearly different.

I agree more with the opinion of the Beijing Court. Just like trademark and trade name rights, rights over domain names shall be effective on the registration date, and the right holder shall not otherwise need to demonstrate or prove the legitimacy of its registration or use, unless its actions are judged in bad faith, as with illegal or special purposes. Ordinarily, the application and registration of rights holders has legitimate reasons.

For the determination of bad faith, under the requirements of the market economy, anything can be done so long as there is not an explicit legal restriction. If the right holder first registers a domain name, and afterwards has no active sales or use that causes confusion, then it shall not be determined to be holding the domain name in bad faith. Additionally, price fishing has some lack of legitimacy. Therefore, even a price offer is made, that may not been regarded as the true meaning of the domain name holder.

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