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China Law Insight

Trademark

The relation between Domain Name Registration and Trademark infringement

Posted in Trademark

By King & Wood Mallesons’ Trademark Group

WeiChai Power Co. Ltd. (“WeiChai Co. Ltd.”) has been using “WeiChai” as their well-known company name and trademark. WeiChai Co. Ltd. filed a complaint at the Domain Name Dispute Resolution Center against SHENZHEN PANGU INVESTMENT GUARANTEE CO. LTD. (later changes its name to GUO ZHONG CO. LTD.) for their registered “weichai.cn.” domain name. On 30 January 2011, the Domain Name Dispute Resolution Center ruled that the domain name should be transferred to WeiChai Co. Ltd. Dissatisfied with the ruling, GUO ZHONG CO. LTD. initiated a civil action before the Beijing First Intermediate People’s Court, claiming that: 1. The disputed domain name should not be transferred to WeiChai Co. Ltd. in respect of its registration and use; 2. WeiChai Co. Ltd. should compensate for their losses of RMB 100, 000. The Court of First Instance held that GUO ZHONG CO. LTD.’s simply registering the domain name but not actually using it has not related such domain name to any products and services. As a result, this eliminates the possibility of trademark infringement by using the domain name as the mark of origin on the Internet for providing products and services. GUO ZHONG CO. LTD. registering the disputed domain name has not infringed upon WeiChai Co. Ltd.’s rights to use its registered trademark and or WeiChai Co. Ltd.’s rights to use the trademark as its company name. All in all, the act of registering the disputed domain name has not resulted in unauthorized use of WeiChai Co. Ltd.’s company name. Nonetheless, GUO ZHONG CO. LTD. should have known the rights enjoyed by WeiChai Co. Ltd. over its well-known trademark and company name “Weichai”, and yet it still used the same wordings to register as its domain name. In the meantime, it has not yet actually used such domain name or got prepared to do so. It is for sure that WeiChai Co. Ltd. enjoys the right to use “WeiChai” as their trademark and company name, and such rights do not necessarily extend to the right over “WeiChai” as a domain name; however, it is commonly known that domain names, trademarks and company names can all be used to indicate the source of goods or services and WeiChai Co. Ltd. has a closer connection to the disputed domain name and more obvious interest of registering a domain name which is the same as its trademark or its company name for identification. GUO ZHONG CO. LTD.’s improper registration of the disputed domain name has in fact prevented WeiChai Co. Ltd. from registering the same, and consequently caused damage to WeiChai Co. Ltd.

To conclude, GUO ZHONG CO. LTD.’s registration of the disputed domain name has violated the good faith principle and business ethics. Such act has damaged WeiChai Co. Ltd.’s legitimate rights and interests and violated Article 2 of the Anti-Unfair Competition Law of the People’s Republic of China, which provides the meaning of “unfair competition”. In view of this, Beijing First Intermediate People’s Court dismissed GUO ZHONG CO. LTD.’s claim. WeiChai Co. Ltd. was not satisfied with the First Instance judgment, claiming that GUO ZHONG CO. LTD.’s registration of the disputed domain name has infringed upon its right over “Weichai” as trademark and company name and hence sought to appeal. However, the Court of Second Instance also holds that GUO ZHONG CO., LTD did not actually use the domain name in business and the registration of the domain name alone would not cause confusion to the public, thus GUO ZHONG CO., LTD’s registration of the disputed domain name should not constitute infringement to WeiChai Co. Ltd’s rights over its trademark and trade name. In view of this, the Court of Second Instance, i.e. Beijing High People’s Court sustained the judgment of First Instance and dismissed the appeal.

For more information about the above issue, please refer to:http://www.chinaipmagazine.com/Topics/InfoShow.asp?t_id=11&id=368