Abstract
Domain name can be considered the addresses of the Internet, e-mail is sent, and Web pages are found through the use of domain names. As an example, the Web address for the Perkinscoie Web sites is www.perkinscoie.com while e-mail to Sui-Yu Wu (Attorney at Law in Taipei Branch) is sent to wusuy@perkinscoie.com (both using the “perkinscoie.com” domain name). Domain names are more than just address, however, since they can be selected by the “addressee” and are usually closely associated with a particular service or product.
(Published by “(Taiwan) Proceedings of 2000 National Science and Technology Law Conference”, November 23, 2000, pp. 779–790)
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Notes
- 1.
Some well publicized examples of domain names disputes can be found in http://www.bitlaw.com/internet/domain.html).
- 2.
Section 32 of the Lanham Act provides remedies for the infringement of federally registered trademarks. Section 43(a) provided remedies for false designation and descriptions (that is, unfair competition).
- 3.
15 U.S.C. §1125(d). For the full text, see http://www.cs.utah.edu/classes/cs5965/cybersquatting.html. See also http://www.mama-tech.com/antipiracy.html.
- 4.
Fulande Development Corp. from Shijiazhuang City v. Beijing Mitian Jidye Technology and Trade Co., Ltd., Civil Judgment of Beijing 1st Intermediate People’s Court (1999) Yi Zhong Zhi Chu No. 48.
- 5.
For a thorough discussion of the PDA case, see Ma, Laiker, The Analysis of Handling Principals on Domain Name Preemptive Registration Cases from the PDA Case (http://www.chinaiprlaw.com/fgrt/fgrt19.htm).
- 6.
See Civil Judgment of Beijing 2nd Intermediate People’s Court (2000) Er Zhong Zhi Chu No.86. Note: But it was revoked by Beijing High People's Court in November 2001. See Civil Judgment of Beijing High People's Court (2000) Gao Zhi Zhong Zi No.76.
- 7.
See cong. Rec. S19312.
- 8.
E.g. in Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (C.D. Mass. 1999), court held that mere registration of clue.com domain name did not automatically dilute “clue” mark, and that those was insufficient edivence that mark met standard for protection as famous or that defendant’s use would cause dilution.
- 9.
945 F. Supp. 1296, 1303, 40 USPQ 2d 1908 (C.D. Cal. 1996), affirmed, 141 F. 3d 1316, 46 USPQ 2d 1511 (9th Cir. 1998).
- 10.
Id. at 1239. Contra, Academy of Motion Picture Arts & Sciences v. Network Solutions Inc., 45 USPQ 2d 1463, 1466 (C.D. Cal. 1997), and Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal. 1997), affirmed, 52 USPQ 2d 1481 (9th Cir. 1999).
- 11.
For many other APCA cases, (see http://www.perkinsoie.com/Internet case Digest).
- 12.
See Zhu Qichao & Zhu Bin, Domain Name and Trademark (China Patents & Trademark No.1, 1998) p.59.
- 13.
Currently, there are other three domain name preemptive registration cases pending in the courts which all are against the same defendant. One is U.S. Dupont Corp. v. CINET (alleging trademark infringement and unfair competition), the second is U.S. P&G Co. v. CINET (requesting the court to order the defendant to desist from its infringing act and to revoke its registered domain name). The third one is U.S. Dow’s Chemicals Inc. v. CINET (maintaining that the defendant’s act has constituted preemptive registration of domain name in bad faith and requesting the court to order the defendant to stop using and revoke the preemptively registered domain name and to bear the fees paid by the plaintiff and the fees relating to this lawsuit).
- 14.
See Shan Yan, Basic Court Approach to Handling IP Disputes on the Internet (China Patents & Trademarks No.1, 2000) p.85.
- 15.
This was based on an interview with Prof. Liu on Sep. 7, 2000 in his research room.
- 16.
Art.6 bis (1).
- 17.
Concretely speaking, here exists this situation: “Chinese Law only protects registered trademark as to domestic trademark, but protects registered foreign trademark, and unregistered trademark as to foreign trademark (of course is the well-known trademark decided by such country). Therefore, it provides “super national treatment” for foreign trademark, whereas the domestic unregistered trademark can not be afforded the right derived from the Paris Convention. The reason is in China only the registered trademark can be well-known trademark (See Trademark Law Enforcement Rule Art.12). See Song Sun Lin, The Challenge on Chinese Trademarrk Exclusive Right System by Trademark Preemptive Registration (published by Hebei Law Review (Shijiazhuang) in May, 1998) at p.49.
- 18.
It should be noted that para.3 of Art. 16 of TRIPs Agreement extends its protection on well-known trademark to dissimilar products or service, so long as such products or services would indicate a connection between those goods or serving and the owner of the registered trademark, and thus does damage to the interest of the well-known trademark owner.
- 19.
See Xue Hong, The Net Law is Spacious Also—The Punishment on Domain Name Infringing Acts under Chinese Legal Mechanism (published by Int’l Trade (Monthly), No.6, 1999) at 50.
- 20.
See the (V) and (VIII) factors of the nine factors which a U.S. court may consider (but is not limited to) in determining whether a person has a bad faith intent under Sec. 3002 of the ACPA.
- 21.
See Beijing Youth Daily, Aug. 25, 2000 at column 3. The Guiding Opinion points out that preemptive registration in bad faith is a kind of unfair competitive conduct. The court can order the malevollent preemptive registrant stop using, apply for revoking or change the domain name, or the court even can adjudicate the registrant to pay for the economic compensation. However, it should be noted that this Guiding Opinion is of local binding effect (i.e. in Beijing area) only.
- 22.
For example, Song Sun Lin, supra note 17 at 50. (The trademark preemptive registration conduct can be deemed completely an unfair competitive act under the legal theory.) See also Yin Xue Xin, General Discussion on the Legal Problem of Domain Name (published in Int’l Trade Questions (Monthly), No.5 in May 1999) at 58. (As to the preemptive registration in bad faith and which is used to engage in unfair competitive conduct, we may expand the interpretation of Article 5 of AFCL by interpreting broadly the “market transaction” as dividing into “tangible market transaction” and “cyber electronic market transaction”. Therefore, if one preemptively registers other’s trade name as his domain name and engages in unfair competitive conduct , it violates the Anti-Unfair Competition Law). But how about the well-known or unwell-known trademarks? Why are they not included in this resolving approach? The author didn’t explain! In addition, see Xue Hong, supra note 19 at 50 and the accompanying text.
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Guo, Y. (2015). How Would the Domain Name Dispute—Ikea “Cybersquatting” Case Be Decided Under American Law?. In: Guo, Y. (eds) Research on Selected China's Legal Issues of E-Business. Springer, Berlin, Heidelberg. https://doi.org/10.1007/978-3-662-44542-6_14
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