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Hit by the lawsuit against WIPO domain name dispute decision in China? Respond actively! (UPDATED)
For domain name disputes, applying to WIPO Arbitration and Mediation Center for arbitration is a way that many foreign right holders are willing to choose because of its fast speed and low cost. If the respondent is a Chinese enterprise or a Chinese citizen and it is unsatisfied with the decision of transferring the disputed domain name made by WIPO Arbitration and Mediation Center, it/he/she may bring a lawsuit to a Chinese court with jurisdiction.
Our law firm has represented several network domain name ownership/ infringement lawsuits and achieved successful results. For example, we recently represented a well-known Italian brand in such a lawsuit. The court fully supported our claim and finally decided that the disputed domain name should belong to the Italian brand owner.
Based on Chinese laws and regulations and our experience, the following is a brief introduction on how should overseas enterprises respond to the lawsuits filed with Chinese courts against WIPO domain name decisions.
Ⅰ. The decision of WIPO Arbitration and Mediation Center is not final
Article 4(k) “Availability of Court Proceedings” of Uniform Domain Name Dispute Resolution Policy provides that the mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure.
According to the above provisions, the decision of WIPO Arbitration and Mediation Center is not final. If the domain name holder is a Chinese enterprise or a Chinese citizen, and it is unsatisfied with the decision, it/he/she may file a civil lawsuit in a Chinese court with jurisdiction. In practice, the complainant and the domain name registration institution are generally listed as co-defendants in the civil litigation. Such cases can be accepted by the court with jurisdiction over internet domain name ownership disputes in the place where the domain name registration institution is located, such as the Internet Court.
Ⅱ. The lawsuit will be tried in accordance with Chinese civil procedure
Different from the administrative litigation filed with Beijing Intellectual Property Court against the administrative decision of CNIPA, the defendants of the lawsuit filed by the respondent with Chinese court against WIPO domain name decision are usually the domain name registration institution and complainant, instead of WIPO Arbitration and Mediation Center. The lawsuit will be tried in accordance with Chinese civil procedure.
Ⅲ. Overseas enterprises' response strategy
1. Respond actively
After knowing that the Chinese court has accepted the case, it is suggested that overseas enterprises entrust Chinese lawyers to respond to the lawsuit actively. If the foreign enterprise does not respond to the lawsuit, the Chinese court may make a default judgment in accordance with Chinese law after hearing the opinions of the plaintiff (respondent of the complaint submitted to WIPO Arbitration and Mediation Center). Due to the differences between Chinese law and the Uniform Domain Name Dispute Resolution Policy applicable to WIPO, if the foreign enterprise fails to provide evidence and state its opinions, it is possible that the Chinese court may make a judgment unfavorable to the foreign enterprise.
2. Submit supplementary evidence in accordance with Chinese laws on the basis of the evidence submitted during the WIPO domain name decision stage
Article 4 of Interpretation of the Supreme People's Court on Several Issues concerning the application of law in the trial of civil disputes involving internet network domain names provides that, when trying domain name dispute cases, the people's court shall determine that the defendant's registration and use of domain names constitute infringement or unfair competition if they meet the following conditions:
(1) The civil rights and interests claimed by the plaintiff are legal and valid;
(2) The defendant's domain name or its main part constitutes the reproduction, imitation, translation or transliteration of the plaintiff's well-known trademark; Or the same or similar to the plaintiff's registered trademark and domain name, etc. , which is enough to cause misunderstanding among the relevant public;
(3) The defendant has no interest in the domain name or its main parts, and has no legitimate reason to register and use the domain name;
(4) The defendant has bad faith in the registration and use of the domain name.
According to the above legal provisions and Chinese litigation practice, overseas enterprises need to prove that their trademarks are in force in China, and of certain popularity. Such evidences may not be submitted in the WIPO domain name arbitration stage. Therefore, it is suggested to submit the following relevant evidences in China litigation:
(1) Evidence of prior civil rights and interests in China
Due to the territoriality of trademarks, even if overseas enterprises have submitted the registered trademark certificate of their country to WIPO Arbitration and Mediation Center, in Chinese litigation proceedings, overseas companies shall supplement and submit evidence to prove their civil rights and interests are in force and valid in China, which is usually the Chinese trademark registration certificate or Chinese local certificate issued by the CNIPA for an International Registration designating China, The date of registration of the trademark shall be earlier than the date of registration of the disputed domain name.
(2) Evidence of popularity in China
In the trial stage of WIPO domain name decision, overseas enterprises will generally submit evidence that their trademark right is well-known in the world or abroad (usually the country where the foreign enterprise is located). At the stage of litigation in China, overseas enterprises should submit additional evidence to the Chinese court to prove that their trademark is of certain popularity in China before the registration of the disputed domain name, such as Chinese newspaper reports retrieved with foreign enterprise trademarks as keywords issued by the National Library of China, Chinese web pages retrieved with foreign enterprise trademarks as keywords, and sales agreements signed between overseas enterprises and Chinese dealers, advertising contracts signed between overseas enterprises and Chinese advertisers, invoices of advertising fee, advertisements displaying foreign enterprise trademarks, etc.
(3) Evidence of bad faith by the domain name holder
Article 5 of Interpretation of the Supreme People's Court on Several Issues concerning the application of law in the trial of civil disputes involving internet network domain names provides that if the defendant's behavior is proved to be under any of the following circumstances, the people's court shall determine that it has bad faith:
(1) Registering another person's well-known trademark as a domain name for commercial purposes;
(2) Registering and using domain names that are the same or similar to the plaintiff's registered trademarks and domain names for commercial purposes, deliberately causing confusion with the products and services provided by the plaintiff or the plaintiff's website, and misleading network users to visit its website or other online sites;
(3) Having offered to sell, lease or otherwise transfer the domain name at a high price to obtain illegitimate benefits;
(4) After registering the domain name, it/he does not use or prepare to use it, but deliberately prevents the right holder from registering the domain name;
(5) Having other circumstances in bad faith.
In practice, if the respondent has contacted the overseas enterprise through e-mail with the intention of selling the disputed domain name at a high price, the foreign enterprise shall pay attention to retain the e-mails between the overseas enterprise and the respondent as evidence of the respondent's bad faith. Since the respondent may deny the authenticity of the e-mails in Chinese lawsuit, in order to enhance the strength of proof, it is suggested that overseas enterprises have these e-mails notarized by local notary and legalized by the Chinese Embassy or consulate in that country.
Note: Chinese courts have high requirements for the form of evidence. For example, for the documentary evidence, usually the original that can be verified for authenticity needs to be submitted. Therefore, when sorting out and submitting the supplemental evidence, it is advisable to prepare the original or notarized documents, library search reports and other evidence with high probative power as far as possible. For the evidence formed abroad, notarization or notarization and legalization procedures shall be conducted according to the regulations.
Conclusion
When an overseas enterprise is sued by a Chinese enterprise or a Chinese citizen in a Chinese court for being unsatisfied to the WIPO domain name decision, it should entrusts Chinese lawyers to actively respond to the lawsuit, sort out and supplement the relevant evidence including the evidence of prior trademark in China and the popularity of the trademark in China to the Chinese court, so as to ensure the final victory.
