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Four Ways to Fight Cybersquatting in China

Tags: Doing Business in China, IPRs, OEM, SMBs and SMEs

       

It can be frustrating when you want to register a domain name for your business but find that someone else has already taken it. In this situation, you may encounter “cybersquatting”, a.k.a. “domain name squatting”. Someone has registered a domain name matching your trademark, blocking others from registering it. The squatter usually seeks profits from re-selling the name or advertisements.

Even global giants have encountered cybersquatting in China before.

In 2007, the technology giant Baidu filed a complaint with the Asian Domain Name Dispute Resolution Center (ADNDRC), claiming a squatter in China had registered the domain name “baidubaike.com” to profit from re-selling the name.

Last year, Google submitted a complaint to ADNDRC, asserting that a squatter in China had registered the domain name “gmail263.com”. This domain name not only misled users but used the reputation of “Gmail” to increase website traffic.

Fortunately, both companies were successful in reclaiming the disputed domain names.

(Hong Zheng, a partner lawyer in a Chinese Intellectual Property law firm, represented both Google and Baidu in their claims. If you have a similar issue, you can register on Trustiics to book a consultation with Mr. Zheng.)

You may wonder what solutions are available when you find a squatter sitting on your domain name. There are four approaches you can take.

Option 1 – Send a Cease and Desist Letter to the registrant

Recommendation Score: Low

When encountering cybersquatting, you may send a Cease and Desist Letter to the squatter to request de-registering or transferring the domain name to you.

However, this tends to be an ineffective approach in practice.

A Cease and Desist Letter is not legally enforceable, and a squatter typically declines to respond to it. Besides, in most cases, you cannot access the registrant’s contact information due to the privacy protection policy.

Option 2 – Submit a complaint to an ICANN-approved institution

Recommendation Score: High

This is the most accessible and practical approach to fighting cybersquatting in China.

You will need to find a lawyer who can submit a complaint on your behalf to an ICANN-approved institution. Once they have officially received the complaint, the institution will set up a panel to decide on the case.

If the decision is found for the complainant, the registrant is obliged to transfer or de-register the disputed domain name.

The process may take about three to five months and cost approximately three to five thousand U.S. dollars.

Note 1:

To successfully claim back the disputed domain name, a complainant will need to prove:

  1. The disputed domain name is identical with, or confusingly similar to, the complainant’s name or mark in which the complainant has civil rights or interests; 
  2. The disputed domain name holder has no right or legitimate interest in respect of the domain name or major part of the domain name; AND
  3. The disputed domain name holder has registered, or has been using, the domain name in bad faith (e.g., re-selling the domain name to obtain unjustified benefits).

Note 2:

If you are claiming back a “.com” or “.cn” domain name (top-level domains in China), you must submit a complaint within three years of the domain name registration.

Option 3 – Sue the cyber squatter

Recommendation Rating: Medium

If you are facing the following situations, you may choose to file a civil lawsuit against the registrant:

  1. You want to claim back a “.com.cn” or “.cn” domain name, but at least three years have passed since the domain name was registered;
  2. The registrant committed more infringing activities besides domain name squatting, or abusing the disputed domain name (e.g., using the domain name for illegal purposes).

Litigation is definitely not the most efficient way to fight cybersquatting, although sometimes it is the only option. The lawsuit can be lengthy and expensive: it usually takes at least two years and may cost approximately 60-70 thousand U.S. dollars in lawyer fees.

Option 4 – Reach a settlement with the cyber squatter

Recommendation Rating: Medium

Alternatively, you may contact the registrant to buy back the domain name. We recommend having a lawyer in China negotiate on your behalf.

However, this approach generally leads to a higher cost than submitting a complaint, because the squatter may require a high purchase price. It may also encourage more domain name squatting activities in the future.

Recommended Lawyer – Hong Zheng

Zheng Hong (IP expert)

Mr. Hong Zheng is a partner lawyer at a leading Intellectual Property law firm in China, with 20 years of experience advising international businesses in protecting their Intellectual Property Rights in China.

Mr. Zheng has extensive experience handling domain name disputes, with nearly 100% success in helping clients address squatting issues and claim back domain names. In addition, he is considered as one of the best trademark lawyers helping international businesses protect their trademarks in China.

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