Legal issues regarding domain names and trademarks

According to the registration information of the Trademark Office, the other party Shimaden CoIn 2002, SHIMADEN successfully registered the trademark of SHIMADEN in China, and designated the goods as related instruments and equipment. And I opened the above-mentioned domestic domain name, and found that there was not only information such as "Island Electric**" on the page, but also related products similar to Japanese products, and even the marked product manufacturers were "Japan Island Electric", which was not good overall.

The key to whether the Japanese side can successfully get back the above-mentioned domain name lies in the following points: 1. What is the relationship between the domestic company and the Japanese side, and if it is or has been a Japanese domestic businessman, it will be extremely unfavorable. This is because this can prove to a certain extent that the domestic company has malicious intent in preemptive registration, thus constituting unfair competition; 2. Whether the trademark registered by the Japanese side has constituted a well-known trademark, if it is finally recognized as a well-known trademark, it will be extremely unfavorable.

At present, when it comes to the issue of trademark and domain name conflict, the main consideration is whether the trademark is well-known and whether the domain name registrant has bad faith. Article 5 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names stipulates that if the defendant's conduct is proved to have any of the following circumstances, the people's court shall find that the defendant has malicious intent:

1) Registering another person's well-known trademark as a domain name for commercial purposes; (2) Registering or using domain names that are identical or similar to the plaintiff's registered trademarks, domain names, etc., for commercial purposes, intentionally causing confusion with the products and services provided by the plaintiff or the plaintiff's **, and misleading network users to visit its **or other ** sites; (3) Having offered, leased or otherwise transferred the domain name to obtain improper benefits; (4) After registering the domain name, it does not use it or intends to use it, but intentionally prevents the right holder from registering the domain name; (5) There are other malicious circumstances. Therefore, the content on the above-mentioned domestic company domain name** is really not very favorable, this is my opinion.

It doesn't matter if Shimaden is a well-known trademark or whether it is famous in China, if not, you can ignore him and let him sue.

If Shimaden is a well-known trademark, according to the international treaties that China has acceded to, Japan should protect its rights and prohibit other companies from using it.

If it is not a well-known trademark, it depends on whether the Japanese company is registered in China. If not, then there is no problem.

Stupidity!!! Isn't it possible to use it if it's not a famous brand?

China's trademark registration law stipulates that if the logo is 30% different from other company logos, it can be registered! However, if less than 30% are different and their business scope does not belong to the same field, it is not an infringement!

However, if your company's domain name is already less than 10%, if you are not legally liable in the following cases: it has been registered in China (the domain name is not counted), and the domain name has also been registered and bought out, and the scope of your involvement with the small Japanese company is different, you will not accept legal liability. Of course, if Little Japan wants this domain name, then they will have to spend ** to buy it out from you!

But is it possible? Might they not have registered this domain name? ）

Don't be afraid, this trademark is not an internationally renowned brand, and this domain name is a domestic domain name, and if you want to go back to the domestic domain name, it can only be a well-known trademark, not even a Chinese famous brand.

Domain name infringement refers to the act of registering or selling domain names out of malice to profit from other people's trademarks, names, or trade marks. In domain name disputes, domain name infringement generally refers to the malicious use of another person's domain name, and bad faith is a subjective element that the court must have to determine that the act of cybersquatting constitutes infringement or unfair competition.

First, in terms of subject, domain name infringement involves a special subject, that is, the holder of the domain name;

Second, domain name infringement occurs in the process of registration and use of domain names;

Third, because domain names are a new thing, there are no provisions on domain names in the law on the adjustment of trademarks, trade names, names, etc., and there are gaps and disputes in the law.

1. What are the requirements for trademark infringement?

1) There must be an illegal act, that is, the perpetrator has carried out the act of selling goods with counterfeit registered trademarks;

2) There must be a fact of damage and extinction, that is, the act of selling goods with counterfeit trademarks carried out by the actor has caused damage to the person whose trademark right is extinct. The sale of goods counterfeiting the registered trademarks of others will cause serious property losses to the right holders, and at the same time, it will also cause goodwill damage to the entities that enjoy the registered trademark rights. Both property loss and goodwill damage are facts.

3) The offender is subjectively at fault, that is, the perpetrator has known or should have known about the fact that the goods sold are goods with counterfeit registered trademarks.

4) There must be a causal relationship between the illegal act and the harmful consequences, that is, the relationship between the sales behavior of the wrongdoer and the damage caused to the trademark owner by the antecedent and consequence.

2. What acts infringe on trademark rights?

1. Without the permission of the trademark registrant, the trademark that is identical or similar to the registered trademark is used on the same kind of goods or similar goods;

2. Selling goods that infringe the exclusive right to use a registered trademark;

3. Forging or manufacturing the registered trademark logo of another person without authorization, or selling the counterfeit or unauthorized manufacturing of the registered trademark logo;

4. Without the consent of the trademark registrant, the registered trademark is replaced and the goods with the replaced trademark are put on the market;

5. Causing other damage to the exclusive right to use a registered trademark to others.

Methods of reconciling the legal conflict between domain names and trademarks: E-commerce for the transaction of related goods through the registration of words identical or similar to those registered by others as domain names, which is likely to mislead the relevant public by hail, shall be deemed to be an act of trademark infringement.

[Legal basis].

Article 1 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Trademark Dispute Cases.

The following acts are acts that cause other damage to the exclusive right to use a registered trademark of another person as stipulated in Article 57(7) of the Trademark Law:

1) Prominently using words identical or similar to the registered trademarks of others as the trade name of the enterprise on the same or similar goods, which is likely to mislead the relevant public;

Copying, imitating, or translating a well-known trademark registered by another person or its main part is used as a trademark on non-identical or dissimilar goods, misleading the public, and causing the interests of the registrant of the well-known trademark to be harmed;

3) Registering words that are identical or similar to the registered trademarks of others as domain names, and conducting e-commerce through the domain name to trade related goods, which is likely to mislead the relevant public.

Case introduction: Malicious squatting, losing the domain name and losing money to preemptively register the domain name, grabbing it is "earning"? Not long ago, the Siming Court passed a judgment saying "no" to the act of malicious cybersquatting of domain names. In the end, the pirate was found to have infringed in the first instance.

It turned out that a few years ago, Mr. Zeng registered two domain names "He" through Xiamen Yiming Technology ****, and the word "dreamworks" contained in the domain name was similar to the trademark of the well-known animation company DreamWorks. After discovering this, DreamWorks filed a complaint with the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) on the grounds that the domain name in question infringed its trademark rights. Subsequently, the arbitration center found that Mr. Zeng's preemptive registration of the domain name was infringing, and ruled that he transferred the domain name chain to DreamWorks free of charge.

Unsatisfied, Mr. Zeng filed a lawsuit with the court where the service provider changed its name to the local court. However, after Mr. Zeng sued, DreamWorks Animation also filed a counterclaim with the Siming District Court. DreamWorks' counterclaim demanded that Mr. Zeng be ordered to immediately cease the trademark infringement and unfair competition and unconditionally transfer the domain name in question to DreamWorks.

In the end, the court made a first-instance judgment in favor of DreamWorks. The judgment held that DreamWorks enjoyed a legitimate prior interest in "Dreamworks", and that Mr. Zeng's act of registering a domain name that was likely to cause confusion and not using it for a long time after registration and wanting to **** violated the legitimate rights and interests of DreamWorks and constituted unfair competition, and ordered him to immediately stop the infringement and transfer the domain name to DreamWorks for registration and use. At the same time, it will also compensate DreamWorks for economic losses and reasonable expenses of 10,000 yuan.

What does the lawyer say is bad faith squatting? According to the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names, if the defendant's conduct is proved to have any of the following circumstances, it shall be found to have malicious intent: (1) registering another person's well-known trademark as a domain name for commercial purposes; (2) Registering or using domain names that are identical or similar to the plaintiff's registered trademarks, domain names, or so forth for commercial purposes, intentionally causing confusion with the products or services provided by the plaintiff or the plaintiff's **, and misleading network users to visit its **or other ** sites; (3) Having offered, leased, or otherwise transferred the domain name to obtain improper benefits; (4) After registering a domain name, they do not call Jane to use it or prepare to use it, but intentionally prevent the right holder from registering the domain name; (5) There are other malicious circumstances.

From the above case, we can see that the protection of trademarks is not limited to protection, and domain names may also constitute trademark infringement.

Trademark Law of the People's Republic of China

Article 48.

The use of trademarks as used in this Law refers to the use of trademarks on goods, commodity packaging or containers, and commodity transaction documents, or the use of trademarks in advertising, exhibitions and other commercial activities to identify goods.

Legal analysis: The registration and use of domain names should follow the principle of good faith and should not infringe on the prior rights of others. The trademark has been successfully registered, and the use of the registered trademark for domain name registration is an act of infringing on the rights of Dongshan Mountain.

1) Without the permission of the trademark registrant, the trademark identical to the registered trademark is used on the same goods;

2) Without the permission of the trademark registrant, the use of a trademark similar to the registered trademark on the same goods, or the use of a trademark identical or similar to the registered trademark on similar goods, which is likely to cause confusion;

3) Selling goods that infringe upon the exclusive right to use a registered trademark;

4) Forging or manufacturing the logo of another person's registered trademark without authorization, or selling the logo of a registered trademark that is forged or manufactured without authorization;

5) Replacing the registered trademark without the consent of the trademark registrant and putting the goods with the replaced trademark on the market;

6) Intentionally facilitating the infringement of others' exclusive right to use a trademark, or helping others to infringe upon the exclusive right to use a trademark;

7) Causing other damage to the exclusive right to use a registered trademark of another person.

There is a contradiction between the uniqueness of the domain name subject and the plurality of trademark subjects.

Due to technical limitations, in the world, the domain name is absolutely unique, a domain name cannot be enjoyed by multiple owners at the same time, and the trademark does not have to be so, except for the well-known trademark, the trademark can be the same in different classes of goods and services, and because the trademark is only valid in the approved country, as long as the two countries have not acceded to the same trademark international treaty or bilateral international treaty, the same trademark can coexist in the same type of goods and services of the two countries at the same time, it is precisely because of this contradiction, Entities with the same trademark cannot each own the same domain name named after the trademark at the same time, which gives rise to a conflict between the trademark and the domain name. A common dispute is that the domain name used by an Internet user happens to be a registered trademark of another company, or even two legitimate owners of the same trademark want to use their trademark as a domain name.

With the gradual rise of online business activities, "the original technical significance of the domain name has been gradually diluted, and it has been replaced by the commercial identification meaning behind it and the huge commercial value it represents", therefore, most domain name registration applicants are willing to register the trademark as their own domain name, so that for the respective characteristics of the domain name and the trademark, there is a realistic possibility of domain name squatting in the following aspects:

1) Regionality: There is no territorial restriction on domain names, it is globally unique, and it is impossible for the exact same domain name to exist on the Internet, and the domain name that each person successfully applies for is unique to the user. However, trademarks are territorial, and can be owned by different people in different countries or regions, and the registration of a trademark with legal protection in country A does not mean that it is also protected in country B, and only by re-registering in country B can you obtain the exclusive right to use the registered trademark, which is the manifestation of the territorial restriction of trademarks.

Therefore, when there are multiple subjects of trademark rights, although each of them enjoys the exclusive right to use the trademark in different regions, only one of them can apply for registration with the trademark as the domain name, which makes the rights of the legitimate owner of the exclusive right to use the trademark conflict with the domain name.

2) The uniqueness of a domain name is different from a trademark: the types and composition of trademarks are diverse, and the law only restricts the use of identical or similar trademarks on the same or similar goods, that is, several manufacturers can use the same trademark at the same time to produce completely different types of products, such as "Changhong" color TV and "Changhong" clothing, although the trademark name is the same, but the latter does not constitute infringement of the former.

3) Limitation of no similarity of domain names: There is a provision of "identical or similar" in trademark infringement, that is, the words, graphics, letters, numbers, three-dimensional signs and color combinations of the two trademarks are not only different, but also must not be similar, otherwise it constitutes infringement; Domain names, on the other hand, do not have such qualifications.

In our daily life, no matter what kind of rights and interests of domain name or trademark rights are infringed, as long as the perpetrator infringes on the rights and interests, he will be severely punished by the laws and regulations of China, and we should pay attention to the provisions of relevant litigation procedures.