HKIAC Domain Name Dispute Resolution: Update

14 Aug 2020

IP & Domain Name

PRESS RELEASE
HKIAC Domain Name Dispute Resolution: Update

HKIAC is pleased to provide an update on its domain name dispute resolution work. Going forward, HKIAC will provide updates on a quarterly basis.

This update covers HKIAC’s 2019 case statistics, HKIAC and ADNDRC panelist appointment matters, insights from recent cases, amendments to the HKDRP Rules and Supplemental Rules, and HKIAC webinars dedicated to domain name dispute resolution.

2019 HKIAC DOMAIN NAME DISPUTE STATISTICS

In 2019, 182 domain name disputes were submitted to HKIAC. 58% (105) were filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), i.e., they involved generic Top Level Domains (or “gTLDs”) such as .com, .net, .org. 38% (69) were filed under the China Domain Name Dispute Resolution Policy (CNDRP), i.e., they involved .cn and .中国 domain names. 4% (8) were filed under the Hong Kong Domain Name Dispute Resolution Policy (HKDRP), and thus involved.hk and .香港 domain names.

Parties from 34 jurisdictions were involved in the domain name disputes administered by HKIAC in 2019. The top 10 jurisdictions were:

1.      Mainland China
2.      United States
3.      Germany
4.      Hong Kong
5.      Cayman Islands
6.      Switzerland
7.      Singapore
8.      France
9.      United Kingdom / British Virgin Islands
10.    Bangladesh / Canada / Japan / Netherlands

63% of the domain name disputes commenced were conducted in Chinese, and 37% were conducted in English.

HKIAC appointed 195 panelists of 12 different geographical origins or nationalities. The top five* geographical origins or nationalities were:

1.      Hong Kong
2.      Australia
3.      United Kingdom
4.      Mainland China
5.      United States

*Where a panelist has a dual geographical origin or nationality, each geographical origin or nationality is counted as one for the purposes of obtaining the top five figures above.

Over 97% of all complaints filed in 2019 were successful, resulting in the transfer or cancellation of the disputed domain name under the various policies.

PANELIST APPOINTMENTS

HKIAC Domain Name Dispute Resolution Panel

The HKIAC Domain Name Dispute Resolution Panel (HKIAC DNDR Panel) comprises members who have demonstrated experience and relevant expertise in resolving domain name disputes. In the first half of 2020, the HKIAC Appointments Committee approved 26 professionals speaking five languages from seven countries to join the HKIAC DNDR Panel. The HKIAC DNDR Panel currently comprises 103 panelists.

The Criteria and Application Procedure for joining the HKIAC DNDR Panel is available here.

ADNDRC New Empanelment Criteria

The Asian Domain Name Dispute Resolution Centre (ADNDRC) recently revised the criteria for the inclusion of panelists on the ADNDRC Administrative Panel. All pending and new empanelment applications will be assessed against the revised criteria which is available here.

HKIAC is the Hong Kong Office of the ADNDRC and provides domain name services regarding gTLDs, including new gTLDs.

Improving Gender Diversity

From April 2020, HKIAC implemented a policy to improve gender diversity in panelist appointments. HKIAC makes panelist appointments based on expertise, experience, competence, neutrality and impartiality, and actively considers the appointment of female and male panelists on an equitable basis.

INSIGHTS FROM RECENT CASES

Globally recognised brands and service marks

HKIAC frequently administers domain name disputes in respect of globally recognised brands and service marks. A recent example concerns the complaint filed by DELL INC. regarding <dellshops.cn> in which it sought the transfer of the disputed domain name. In the decision, the panelist held that the disputed domain name incorporated “dell” as its key part for distinctive identification purposes. It was decided that this combination might cause confusion leading consumers to think that the <dellshops.cn> website was authorised by DELL INC. to act as its business partner. Read more here (Chinese language decision).

Various languages of proceedings

HKIAC primarily administers cases in Chinese and English but has recently administered cases in Korean, Russian and Japanese. The latter case involved the domain name <softbank-inc.com>. The language of the proceedings as specified in the registration agreement was Japanese. The complainant requested that the panelist determine English to be the language of proceedings. The respondent was in default. In light of the grounds advanced by the Complainant and the lack of objection by the respondent, the panelist determined English to be the language of the proceedings pursuant to Article 11(a) of the UDRP Rules. Read more here.

Visual and aural similarities

In a case involving <dd-in.com>, one of the complainants was the “bbin” group. The distinguishing element of the disputed domain name <dd-in.com> was “dd-in”. It was found to be confusingly similar to the “bbin” mark in which the complainant had rights. In the decision to transfer the domain name, the panelist noted that some internet users thought that the key part of the disputed domain name was “bb-in”. It was deemed relevant that users might be exposed to the risk of typographical errors. Read more here.

AMENDMENTS TO THE HKIRC DOMAIN NAME DISPUTE RESOLUTION POLICY RULES OF PROCEDURE AND HKIAC SUPPLEMENTAL RULES

On 15 July 2020, amendments to the Hong Kong Internet Registration Corporation (HKIRC) Domain Name Dispute Resolution Policy (Policy) Rules of Procedure (Rules of Procedure) were adopted by the HKIRC to reflect that the Hong Kong Arbitration Ordinance (Cap 609) has replaced the former Ordinance (Cap 341). The Policy applies to disputes involving .hk and .香港 domain names.

As a result, HKIAC has amended the HKIAC Supplemental Rules for the Policy (HKIAC Supplemental Rules). Any complaint filed with HKIAC on or after 15 July 2020 under the Policy shall comply with the latest version of the Rules of Procedure and the HKIAC Supplemental Rules. The Policy, Rules of Procedure and the HKIAC Supplemental Rules are available here.

HKIAC DOMAIN NAME DISPUTE RESOLUTION WEBINARS

8 June 2020 Protecting your domain name: HKIAC Insights

HKIAC organised a webinar on 8 June entitled: Protecting your domain name: HKIAC insights. Sarah Grimmer, HKIAC Secretary-General, Shahla Ali, Professor and Associate Dean at the University of Hong Kong Faculty of Law, and Eugene Low, Partner at Hogan Lovells, shared their expertise. Drawing on HKIAC’s experience, the experts explained how domain names can be protected through the effective application of dispute resolution domain name policies. The webinar can be viewed here.

Upcoming webinars

HKIAC will hold webinars in English and Chinese on domain name dispute resolution. Each webinar will focus on one of the three elements under, inter alia, the UDRP policy that must be satisfied for a successful complaint. Details of the English webinars can be found below.

17 August 2020
3.30 - 4.30pm (HKT)
Challenging a domain name, HKIAC Insights part one: The “identical or confusingly similar” requirement. Register here.

31 August 2020
3.30 - 4.30pm (HKT)
Challenging a domain name, HKIAC Insights part two: A domain name holder’s “rights or legitimate interests”. Register here.

14 September 2020
3.30 - 4.30pm (HKT)
Challenging a domain name, HKIAC Insights part three: Acting in “bad faith”. Register here.

Details for the Chinese language webinars will be circulated shortly. For more information on HKIAC’s webinars, please visit our website here.

ABOUT HKIAC DOMAIN NAME DISPUTE RESOLUTION

HKIAC provides comprehensive online dispute resolution services for resolving domain name disputes arising out of gTLDs, new gTLDs and country-code Top Level Domains (ccTLDs). HKIAC has one of the largest caseloads in Asia. Since 2001, HKIAC has handled more than 2,500 domain name cases under six different policies.

HKIAC is a founding member of the ADNDRC which was established in Hong Kong in 2001. The ADNDRC is a UDRP service provider accredited by ICANN. HKIAC operates the Hong Kong office of the ADNDRC.