Domain Name Dispute Resolution Center of China International Economic and Trade Arbitration Commission (CIETAC) recently, with respect to our US client's domain name arbitration case represented by our firm, issued the decision in favor of our client. Thus our client can successfully get back the domain name with its brand at .com.cn.
Brief information about the case:
Our client is a US company having a worldwide fame for its digital audio products. Our client found that a Chinese company registered a domain name with the US company's brand at .com.cn and sold digital audio products with such brand as an agent of such brand products.
The US company's parent company registered the trademark in USA for such brand twenty years ago, and it has not authorized the Chinese company to use this brand. However, the US company has not obtained the trademark exclusive rights for such brand in China; while the operator of this Chinese company filed the trademark registration application for this brand in China, which is still pending and under examination.
When the US client came to our firm for this case, we explained the related regulation and provided a solution and detailed working plans. We conducted investigation and collected evidences, in which we found that the Chinese company is a fake company and never registered in local AIC. We filed the complaint for arbitration to Domain Name Dispute Resolution Center of CIETAC with claiming our client's legitimate rights and requested to transfer this domain name to our client. The Panel of the Center determined upon examination that our client has legitimate rights on the brand, the Chinese company has no legitimate rights or interest over the disputed domain name, and the Chinese company's registration and use of the disputed domain name destroy the regular order of the market, which suffices to causes confusion or mistake, and therefore directs the disputed domain name biamp.com.cn be transferred to our client. It took about three months from filing this arbitration case to obtaining the decision.
Attorney's recommendation:
China follows first-to-file rule for trademark registration applications. The first to file the application will obtain the trademark exclusive rights. Thus it is recommended all companies that are ready to enter Chinese market now or in future apply for registering their mark and domain name as earlier as possible. If others apply and obtain the registration of the mark and domain name, it would be very hard to get back the mark and domain name. Once finding the infringement, it is very important to collect and preserve evidences and take actions.
