In different business fields, there may be completely consistent trademarks and names, but "domain name" is independent and unique, and its registration principle is "first-in, first-served". In theory, any domain name has a "conflict of rights" possibility.

Due to the relative complexity and uncertainty of the "conflict of rights" between domain names and trademarks, ICANN has formulated the "Uniform Domain Name Dispute Resolution Policy" for domain name disputes.

However, due to the commercial "monetization" nature of domain names, many trademark owners abuse dispute resolution policies (reverse domain name hijacking) in an attempt to obtain high-value domain names at a relatively low cost through arbitration.

So in today’s article, the editor will start from the “three elements” of domain name arbitration from a personal perspective, and briefly share how many angles the holder can submit corresponding evidence to keep their domain name after the domain name is arbitrated.

"Three Elements" of Arbitration

According to Paragraph 4(a) of the "Uniform Domain Name Dispute Resolution Policy" (hereinafter referred to as the "Policy"), the complainant must meet the following three elements at the same time in order to be able to successfully arbitrate:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name has been registered and is being used maliciously by (the respondent).

A. Identical or confusingly similar

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark

Key Point: Prove that you registered or acquired the domain name before the Complainant's trademark registration (or service mark was widely known).

In an arbitration case, the complainant applying for arbitration bears the burden of proving that the disputed domain name is identical or confusingly similar to its trademark or service mark.

If the disputed domain name is the same as the complainant’s trademark or service logo, or the disputed domain name contains the complainant’s trademark or service representation, and the registration time of the disputed domain name (or the time when the holder obtains the domain name) is later than the registration time of the trademark , the expert panel will generally default to the achievement of the first element.

That is to say, if the domain name holder (the respondent) can provide corresponding evidence to prove that he registered the disputed domain name earlier than the time when the complainant’s trademark was registered (or the service logo was widely known) , then the arbitration expert panel will base on the specific case and other relevant evidence.

For example, WEX Inc. tried to arbitrate the domain name WEX.com , even though WEX.com (registered on June 25, 1994) is the same as its trademark "WEX (registered on November 12, 1997)", but the registration time of the disputed domain name is obvious It was earlier than the trademark registration time of the complainant, so the expert panel believes that the complainant failed to meet the first element.

Summary of WIPO Panel Comments on Selected UDRP Issues, the Arbitration Panel generally agreed that gTLDs can often be ignored when assessing confusing similarities between trademarks and domain names.

For example, in the " WEX.com " arbitration case, the complainant owns the registered trademark "WEX". In this case, only the similarity between the main part of the domain name and the trademark before the extension of .com can be considered.

B. Rights or legitimate interests

(ii) The respondent has no rights or legitimate interests in the disputed domain name (conflict of rights)

Takeaway: Prove that you have registered or used the domain name in good faith for reasonable and legitimate reasons.

Paragraph 4(a)(ii) of the Policy requires that the Complainant prove that the Respondent has no rights or legitimate interests in the disputed domain name, which is more like the Complainant needing to demonstrate a “conflict of rights” between the domain name and its trademark.

> > The respondent can prove that it has legal rights and interests in the disputed domain name by providing evidence to prove any of the following situations, and it does not conflict with the complainant's trademark rights: >

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> > or >

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> > (ii) Respondent (as an individual, business, or other organization) is known by the domain name (even if Respondent does not acquire trademark or service mark rights); or >

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> > (iii) You are using the domain name in a lawful, non-commercial or fair manner, with no intention of misleadingly diverting consumers with commercial interest or tarnishing the trademark or service mark at issue. >

To put it simply, it is to prove that the reason for owning the domain name is very reasonable, such as planning to use the domain name to build a related website, the domain name has special meaning to oneself (such as name, commemorative date, etc.), and even believes that the domain name has appreciation potential to purchase There are legitimate reasons for owning the domain name.

Of course, the premise is that there is no malicious targeting of other people's trademarks, malicious selling of domain names to trademark owners at high prices, etc.

For example, in the case of the KOF.com dispute that we shared last week , the purpose of the domain name holder to buy the domain name is to believe that KOF.com has its unique value (that is, to think that the domain name has more appreciation potential and to regard it as an investment product) , and did not maliciously use or maliciously sell the domain name at a high price to the complainant, so the domain name was successfully retained.

However, it should be noted that the above situations need to be confirmed by providing tangible evidence. For example, the owner of KOF.com stated on the resolution page of the domain name that the "kof.com" logo is the abbreviation of "Kosher Office Foods", However, since the holder failed to provide evidence to prove that "Kosher Office Foods" is an existing entity, he failed to prove that he provided goods in good faith by "emphasizing on the domain name resolution page that it has nothing to do with the corresponding terminal, or citing other interpretations" or service.

C. Malicious registration or use

Key points: Prove that the purpose of registering a domain name is not to sell it to the trademark owner at a high price, or to prevent the trademark owner from registering the domain name.

In layman's terms, it is to prove that the purpose of registering a domain name is not to sell it to a trademark owner at a high price, or to profit from the popularity of a well-known trademark.

However, special attention should be paid to the fact that there are great risks in registering well-known and publicly recognized referential and iconic domain names such as corresponding trademarks, company names, and product names of well-known corporate brands.

If the domain name holder has also sold the disputed domain name to the corresponding company, or built a website related to well-known trademark services, and pointed the domain name to the website of the trademark owner (or related to its services), it is basically equivalent to directing the malicious The proof of registration is provided to the other party, which greatly improves the probability of the other party's arbitration being successful.

To give a simple example, Baidu.org was successfully arbitrated by Baidu. One of the key factors was that the domain name holder had pointed the domain name to a certain search engine website, which was obviously inconsistent with the services provided by Baidu. same.

> > What kind of behavior is "malicious registration or use of domain names"? >

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> > Paragraph 4(b) of the Policy states that the registration and use of a domain name in bad faith shall be evidence of the holder's existence, including but not limited to: >

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> > (I) Circumstances where Respondent registered or acquired the domain name primarily for the purpose of selling, leasing, or otherwise transferring the domain name registration to Complainant or Complainant's competitor who is the owner of the trademark or service mark for valuable consideration , in excess of its written out-of-pocket costs directly related to the domain name; or >

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> > or >

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> > (iii) The respondent registers or acquires a domain name for the purpose of maliciously disturbing the trademark owner. >

In fact, the proofs of the "three elements" of domain name arbitration are related. For example, the holder can prove that the disputed domain name does not imitate the complainant's trademark or service mark by proving that he obtained the domain name earlier than the complainant obtained the trademark. , and can also prove to a certain extent that he did not maliciously register the domain name against the complainant’s trademark

The holder can also prove that he has not maliciously registered or used the disputed domain name against the complainant’s trademark by proving that he owns or uses the domain name reasonably and legally, such as building a website that has nothing to do with the complainant’s trademark.

Expand & Think

If the terminal is willing to arbitrate, the domain name holder often needs to spend a lot of time and energy to deal with it, and may not be able to successfully keep his domain name.

If the holder wants to sell the high-value domain name in his hand to the terminal, he can also reduce the risk of the domain name being arbitrated by entrusting a third party or a domain name broker to sell it. The reason is very simple: the behavior of the broker and the domain name holder irrelevant .

For example, Royal Caribbean Cruises, Ltd. received a sales email from RCC.com offering a price of 250,000 US dollars, and applied for arbitration of the domain name on this basis;

However, since the marketing email was sent by the RCC.com domain name broker, it cannot represent the thoughts and actions of the domain name holder, and cannot prove that the holder registered the domain name maliciously. Therefore, Royal Caribbean Cruises failed to arbitrate the domain name. domain name.