Factual background

The Claimant was an individual in China and he obtained the domain name in issue through a domain name transfer in December 2011. The Respondent, a Canadian candles maker, owned a trademark which was identical to the main part of the disputed domain name and the trademark owner specified the use of such trademark on Class 11 candles and candle-shaped lighting apparatus. The disputed domain name was a name ending in .com and was registered by a third party in September 2002. In December 2011, the Claimant purchased the disputed domain name from the third party at a low price by bulk-buying. The Respondent in 2005 used the cited mark on candle products for the first time and applied for registration of such trademark in China and was granted the mark in 2008. In addition, the Respondent had the trademark rights in the US and several European countries. The Claimant took advantage of the brand awareness of the Respondent and pointed the disputed domain name to websites of other retailers selling other candle products similar to that of the Respondent, and the Claimant would gain financial benefits if a user clicked any link on the pages.

Procedural history

The Respondent filed a complaint with the WIPO Arbitration and Mediation Centre (hereinafter the "Centre"), alleging that the disputed domain name owned by the Claimant was identical to Respondent’s registered trademark, the Claimant had no legitimate right to the disputed domain name, and registered and used it in bad faith, therefore requesting the Centre to rule that the Claimant had no right to the disputed domain name and the domain name be transferred to the Claimant. On 2 April 2012, the WIPO panel ordered that the domain name be transferred to the Respondent. The Claimant was dissatisfied with the Centre’s decision and filed an action in respect of the network domain name ownership with the Nanjing Intermediate People’s Court on 30 May 2012. In this suit the Respondent was represented by Kangxin. The Respondent’s attorney collected the evidence and prepared case documents from February to May 2013. After two court sessions, the judge approved the two parties’ settlement and the Claimant finally agreed to transfer the domain name to the Respondent.

Outcome

After two court hearings, the Respondent and Claimant reached a settlement agreement. The court issued a civil mediation document and the Claimant transferred the disputed domain name to the Respondent.

Comments

1. Did the WIPO have jurisdiction over the case?

The Claimant alleged that he owned the domain name in issue and that the WIPO’s decision had no legal force. The Respondent argued that the disputed domain name was a name ending in .com and the parties concerned and the dispute settlement body agreed that the domain name holder could obtain the domain name only when he agreed to abide by the dispute resolution policy and jurisdiction. This case therefore should be governed by the UDRP. Additionally, after the Respondent complained to the WIPO, the Claimant filed a response actively and did not raise objections to the dispute resolution body and its applicable rules. This means that the Claimant accepted the WIPO’s jurisdiction and its policy. Therefore, the WIPO’s decision which was made under the UDRP and the relevant rules is legally binding upon the parties.

2. Was the substantive lawWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter the "WIPO Overview 2.0") as the legal basis applicable to the case?

The first registration of the domain name predated the use and registration of the Respondent’s trademark but the domain name was transferred after the trademark was used and registered, but there is no clear law governing the determination of domain name registration date in China. We need to choose the substantive law first to decide whether the domain name transfer is considered a new domain name registration.

The substantive law WIPO Overview 2.0 includes summaries of certain questions that commonly arise in proceedings under the UDRP and discussions made under panel positions that are produced by the WIPO in the hearing of cases and it has the same force and effect as the UDRP. Where the UDRP lacks specific rules, the parties may consult the WIPO Overview 2.0, which is available on the WIPO website and any party can access all the relevant information on the website.

3. When was the domain name registered?

The disputed domain name was registered in 2002, and the Claimant obtained the disputed domain name through a domain name transfer in December 2011. The Respondent used the mark for the first time in 2005 and applied for registration of the trademark in China in 2008. The Claimant contended that he obtained ownership of the domain name on the date that the domain name was registered in 2002. The Respondent argued that the Claimant obtained the domain name on the date of transfer.

According to Article 3.7 of the WIPO Overview 2.0 issued on 31 March 2011, the transfer of a domain name to a third party does amount to a new registration. Therefore, we believe that the date of the disputed domain name registration refers to the date when the transfer was made. Further the Claimant bought the disputed domain name at a low price by bulk-buying and took advantage of the Respondent’s trademark popularity and pointed the disputed domain name to websites of other retailers selling other candle products similar to that of the Respondent, and the Claimant gained financial benefits if a user clicked any link on the webpages, thereby misleading consumers in bad faith. Hence, the date of transferring the domain name to the Claimant should be considered the date of the disputed domain name registration.

Impact of the case

Regarding disputes arising over domain name ownership in whichthe initial registration of a domain name predates the use and registration of a trademark but the domain name is transferred after the trademark is used and registered, the WIPO’s view is that the transfer of a domain name amounts to a new registration, so the date of the domain name registration should be the date when it is transferred. There is no reference to previous court precedents, so this case became the first case in China involving the re-identification of the registration date of such domain names.

For similar disputes arising over domain name ownership in the future, where there are no specific provisions in the UDRP, the parties may consult the WIPO Overview 2.0. However, if there are no specific provisions in Chinese laws, the WIPO Overview shall not be used as the legal basis, provided that domain name registrants and service agencies cite the WIPO Overview in the domain name service agreements.