The domain imdb.cn was sold for almost $30,000 dollars in 2019. A UDRP filed against the domain’s Chinese registrant reveals the number: 200,000 RMB.
At the time, the Chinese currency (Yuan) was listed at 6.7121 to the US dollar, giving an exchange totaling $29,796 dollars at the time the sale occurred.
The Complainant is IMDB.com, Inc., and the Respondent used an attorney in their response.
The case is in Chinese and the decision was based on the fame that the IMDB mark enjoyed in China for the past 20 years. Final decision: Transfer the domain IMDB.cn to the Complainant. An English translation follows:
WIPO Arbitration and Mediation Center
Administrative Experts Group Ruling
Imdb.com, Inc. v. Shijiazhuang Maihang Network Technology Co., Ltd.
Case number DCN2021-00331. Both parties
The complainant in this case is Imdb.com, Inc., which is located in the United States of America (“United States”). The authorised agent of the complainant is Beijing Lusheng (Guangzhou) Law Firm, which is located in China.
The respondent in this case is Shijiazhuang Maihang Network Technology Co., Ltd., which is located in China. The authorized agent of the respondent is Beijing Hengdu Law Firm, which is located in China.
2. Disputed domain names and registries
The domain name in dispute in this case is <imdb.cn> (hereinafter referred to as “disputed domain name”). The registrar for the above-mentioned disputed domain name is Xiamen eName Technology Co., Ltd. (hereinafter referred to as “domain name registrar”).
3. Case procedure
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (hereinafter referred to as the “Center”) received the complaint on September 9, 2021. On September 10, 2021, the Center sent an email to domain name registrars, asking them to confirm the relevant registration matters involved in the disputed domain name. On September 10, 2021, the domain name registrar will send a confirmation reply via email. The domain name registrar confirms that the respondent is the registrant of the disputed domain name and provides its contact details. On September 13, 2021, upon the request of the Center, the domain name registrar further confirmed that the “registrant information of the disputed domain name was last changed on December 3, 2019, and the registrant was changed from Cheng Yahuan to the current complainant Shijiazhuang Maihang Network Technology Co., Ltd.”
The Center confirms that the complaint is in compliance with the “National Top-Level Domain Name Dispute Resolution Measures” (hereinafter referred to as the “Solution”), the “National Top-level Domain Name Dispute Resolution Procedure Rules” (hereinafter referred to as the “Procedural Rules”) and the “World Intellectual Property Organization (WIPO)” National Top-level Domain Name Dispute Resolution and National Top-level Domain Name Dispute Resolution Procedure Rules Supplementary Rules (hereinafter referred to as “WIPO Supplementary Rules”) stipulated form requirements.
In accordance with Articles 5 and 6 of the Rules of Procedure, and Articles 14 to 16, and Article 4(4) of the WIPO Supplementary Rules, the Center formally issued The complainant issued a notice of complaint, and the administrative procedure started on September 15, 2021. According to Articles 17 and 49 of the Rules of Procedure, the deadline for submitting the statement of defense is October 9, 2021. On September 30, 2021, the respondent requested to extend the deadline for submission of the defense statement to October 15, 2021. The center notified the parties on September 30, 2021 that both parties were complained in accordance with Article 20 of the “Solution” The deadline for people to submit a statement of defense has been extended to October 15, 2021. The center received the statement of defense submitted by the respondent on October 15, 2021.
The complainant submitted his own supplementary materials on October 19, 2021.
On October 20, 2021, the center appointed Sebastian MW Hughes as the sole expert to hear the case. The expert group believes that it has been properly established. The expert group submitted the “Acceptance and Declaration of Justice and Independence” in accordance with the requirements of the Center to ensure compliance with Article 29 of the “Rules of Procedure”.
4. Basic facts
4.1. Complainant
The complainant is a company registered in the United States that released the Internet Movie Database (IMDB) in 1996. The complainant also registered the domain name <imdb.com> on January 5, 1996 and began to provide users with IMDB product information and services through the website “www.imdb.com”. The complainant’s website “www.imdb.com” is one of the world’s largest and most comprehensive movie database websites. It provides an online database of information about movies, movie actors, TV shows, TV stars, etc., including many movie information such as Actors, film lengths, content introductions, ratings, reviews, etc.; it is also one of the most well-known movie rating websites in the world.
The complainant obtained the exclusive right to use IMDB’s registered trademark in China. For example: China Registered Trademark No. 4248655, the application date is September 1, 2004, and the registration date is February 7, 2008.
4.2. Respondent
The respondent is a company registered in China.
4.3. Disputed domain names
The original registration date of the disputed domain name <imdb.cn> was June 7, 2011. On September 13, 2021 , the domain name registrar confirmed that the “registrant information of the disputed domain name was last changed on December 3, 2019, and the registrant was changed from Cheng Yahuan to the current respondent Shijiazhuang Maihang Network Technology Co., Ltd. ”
4.4. Disputed domain name website
The disputed domain name website was resolved to a website that claimed to provide “imdb score” and promoted as “IMDB中文网”.
5. Claims of both parties
A. Complainant
The complainant claimed that the dispute was completely within the scope of the “Resolution Measures”, and the expert group had the right to adjudicate the dispute involved. The disputed domain name that was the subject of the complaint was registered in accordance with the agreement that included the “Solution”.
Although the disputed domain name was registered on June 7, 2011, the respondent, Shijiazhuang Maihang Network Technology Co., Ltd., has been in possession of the disputed domain name for less than three years, so the “Solution” is applicable.
(1) The registration history of the disputed domain name
According to the well-known domain name website Domain Tools and Benmi.com’s WhoIs historical records, the disputed domain name has been transferred multiple times in the past three years, and it was finally from October 24, 2019 to January 13, 2020 (the expert group took note of the complaint The Annex shows that the registrant of the disputed domain name changed to the respondent’s WhoIs record time is March 16, 2020) during the transfer to the respondent.
According to the time interval during which the respondent was assigned the disputed domain name, the time for the respondent to register the disputed domain name was less than three years.
(2) The disputed domain name shall be governed by the “Resolution Measures”
The act of the respondent who subsequently obtained the disputed domain name through the transfer constitutes a new domain name registration. The respondent continued to obtain the disputed domain name for less than three years, so the “Resolution Method” was applied for the following reasons:
(1) The nature and consequences of domain name transfer and domain name registration are exactly the same, both of which are to obtain the ownership of the domain name. Regardless of whether it is an initial registration or a transferee registration, the registrant will register its relevant information with the registrar after obtaining the ownership of the domain name, and publicize it through the registrar (WhoIs information). In terms of the acquisition, registration and publicity procedures of domain name ownership, domain name transfer is exactly the same as domain name registration.
(2) Article 9 of the “Solution” stipulates that if the domain name holder under complaint has one of the following circumstances, his behavior constitutes malicious registration or use of the domain name: (1) The purpose of registering or transferring the domain name is to serve as a civil The owner’s complainant or its competitor sells, rents, or otherwise transfers the domain name to obtain illegitimate benefits; […] (3) The registration or transfer of the domain name is to damage the complainant’s reputation and disrupt the complainant’s normalcy Business activities, or confusion and the difference between the complainant, misleading the public […]. The foregoing situations (1) and (3) all include “registered or transferred domain names”, it can be presumed that the “Solution” recognizes that the ownership of domain names can be obtained through initial registration or transferred domain names, and that the behavior of the transferred domain name is equivalent to the behavior of registering a domain name. All are governed by the “Solution”.
In view of this, domain name transfer constitutes a new domain name registration. Therefore, it is the proper meaning of the “Solution” to deal with domain name disputes to include the domain name that has been transferred for less than three years into the scope of application of the “Solution”. The “registration” of the “registration period of three years” stipulated in Article 2 of the “Resolution” shall include the initial registration and the transfer of the transfer of the transfer of the domain name ownership, and the “registration period” shall be obtained from the registrant. Calculated from the date of ownership, that is, from the date of initial registration of the domain name, or from the date of transfer of the domain name.
In practice, the expert group has also repeatedly determined that domain name transfer constitutes a new domain name registration.
Therefore, the “registration period of three years” stipulated in the “Solution” should include the initial registration and the transfer of the transfer of the transfer of the domain name ownership, and the “registration period” should be counted from the day when the registrant obtains the ownership of the domain name. That is, from the date of initial registration of the domain name, or from the date of the transfer of the domain name.
The disputed domain name is the same as the name or logo that the complainant has civil rights and interests, or is similar enough to cause confusion; the respondent does not have legal rights to the disputed domain name or its main parts; the respondent has malicious intent in the registration and use of the disputed domain name .
B. Respondent
The respondent argued that the dispute should be governed by the “China Internet Network Information Center Country Top-level Domain Dispute Resolution Measures” (hereinafter referred to as the “Solution” (2014)” implemented on November 21, 2014, instead of June 18, 2019 The “Solution” that will be implemented from now on. The specific reasons are as follows:
The domain name in dispute was purchased by the respondent and natural person Cheng Yahuan from a third party on April 1, 2019, at a purchase price of RMB 200,000, and the trading platform was “Yuzhua.com (https://www.yuzhua.com/)”. After the purchase, the disputed domain name was initially registered under the name of the natural person Cheng Yahuan. Later, in order to facilitate the ICP filing of the website, the disputed domain name was changed to the name of the respondent. Therefore, regardless of whether the disputed domain name is registered under the name of the natural person Cheng Yahuan or under the name of the respondent, the disputed domain name is actually controlled by the respondent, and the registrant has not been substantially changed.
The date when the respondent actually purchased and began to hold the disputed domain name was April 1, 2019. At that time, the “Resolution” (2014) was still in effect, and the 2019 “Resolution” has not yet been formally implemented. Therefore, based on the principle of “the law is not retroactive”, it is more appropriate to apply the Resolution (2014) to this dispute. Otherwise, if the “Solution” is revised every time, of course, it will bind the behavior before the modification, which will make the previous domain name registration (including transfer) and holding behavior in an unstable state, thereby destroying the entire domain name management order.
Article 2 of the “Measures” (2014) stipulates: “These measures are applicable to disputes arising from the registration or use of Internet domain names. The disputed domain names shall be limited to the’.CN’,’ managed by China Internet Network Information Center. .中国’ domain name. However, the domain name dispute resolution agency will not accept the disputed domain name registration period for two years.” In this case, the date when the respondent actually purchased and began to hold the disputed domain name is April 1, 2019 , And the complainant filed this complaint on September 9, 2021, which obviously has exceeded the two-year complaint period.
Based on the above, the disputed domain name has been under the actual control of the respondent since April 1, 2019, and no actual transfer has occurred. The complaint of the complainant has exceeded the two-year complaint period, so the center should not accept this Complaints.
Based on this, the respondent responded to the statements and conclusions in the complaint and requested the administrative expert group to reject the remedy requested by the complainant.
Although the respondent believes that the center should not accept this domain name dispute, in order to protect the respondent’s own legitimate rights and interests, the respondent still responds to the statements and conclusions stated in the complaint. The details are as follows:
Although the disputed domain name contains the word “imdb”, this word is not the only IMDB trademark corresponding to the complainant, and there are other third-party entities that have exclusive trademark rights to IMDB. Therefore, the coexistence of the disputed domain name and the complainant’s IMDB trademark is not enough to cause confusion and misunderstanding by Internet users.
The Chinese name of the website pointed to by the disputed domain name is “爱影库”, which is obviously different from the Chinese name of the website pointed to by the complainant’s domain name <imdb.com>.
According to WhoIs information, the disputed domain name was registered on June 7, 2011. As mentioned above, the respondent and natural person Cheng Yahuan purchased the disputed domain name from a third party on April 1, 2019, and paid the corresponding consideration. Therefore, of course, it inherited the legality of the disputed domain name since the date of registration. rights and interests.
Before the respondent received the complaint sent by the center, the respondent had been using the disputed domain name in a reasonable manner, and there was no intention to mislead consumers in order to obtain commercial benefits.
Based on the above, the respondent has a legitimate interest in the disputed domain name.
According to the list of IMDB trademarks registered in China provided by the complainant, the earliest time the complainant registered the IMDB trademark in China was September 1, 2004. According to the respondent’s query of historical screenshots of the website, the disputed domain name was initially set up as early as May 2004, which was earlier than the time when the complainant registered the IMDB trademark in China.
Before the respondent actually accepted the disputed domain name, the disputed domain name had already been set up, and the content of the website existed before the respondent was assigned the disputed domain name. Therefore, the respondent did not know the existence of the complainant and its IMDB registered trademark when he was assigned the disputed domain name.
The disputed domain name was obtained by the respondent through legal registration. The respondent did not sell, rent or otherwise transfer the disputed domain name to the complainant or its competitors in exchange for remuneration higher than the actual cost value directly related to the dispute that the respondent can prove.
The purpose of the respondent’s registration or transfer of the disputed domain name is not to sell, rent or otherwise transfer the disputed domain name to the complainant or its competitors in order to obtain illegitimate benefits.
The purpose of the respondent’s registration or transfer of the disputed domain name is not to prevent the complainant from using the name or logo that he has legal rights and interests in the form of a domain name on the Internet.
The respondent does not have a competitive relationship with the complainant, and the respondent registered or transferred the disputed domain name not to damage the complainant’s reputation, disrupt the complainant’s normal business activities, or confuse the difference with the complainant and mislead the public.
Based on the above, the respondent does not have any malicious intent to register and use the disputed domain name.
6. Analysis and identification
6.1. Supplementary materials
According to Article 31 of the Rules of Procedure:
“The expert group shall conduct the case procedure in a manner deemed appropriate in accordance with the “Rules of Procedure” and “Supplementary Rules”, based on the respective claims, the facts involved, and the submitted statements of the complainant and the respondent. Evidence, based on the “Solution” and applicable legal rules to make a ruling on domain name disputes. […]
In the process of dispute resolution, the expert panel should treat both parties equally and give both parties the opportunity to state facts, explain reasons, and provide evidence on an equal basis.
The expert group should ensure that the dispute resolution process proceeds quickly. At the request of the parties, the expert group has the right to decide to extend the time limit determined by these rules under special circumstances.
The expert group has the right to determine the admissibility, relevance, interest and power of evidence. ”
According to Article 32 of the Rules of Procedure:
“In addition to the complaint and defense, the expert group has the right to request any party to provide further explanations and relevant evidence materials on the case.
For the materials submitted by the parties themselves in addition to the complaint and the reply, unless the parties agree otherwise or the expert group decides otherwise, the expert group will no longer accept in principle. ”
Therefore, according to Article 31, the expert group has the responsibility to ensure that administrative procedures are carried out in appropriate circumstances. Article 31 also requires the panel of experts to ensure that both parties are treated equally and that each party has the opportunity to present its case. In this regard, according to Article 32, the expert group has the right to request the parties to submit further statements or documents in addition to the complaint and defense at its sole discretion. Therefore, Article 32 does not explicitly allow any party to submit supplementary materials on its own. However, Article 32 of the “Rules of Procedure” allows the expert panel to decide whether to accept the supplementary materials submitted by the parties themselves based on all the circumstances of the case.
After reviewing the supplementary materials submitted by the complainant, the expert team believed that the supplementary materials submitted by the complainant mainly repeated the opinions contained in the complaint. Therefore, the expert team decided not to accept the supplementary materials submitted by the complainant to the center.
6.2. Applicability of the “Solution”
In this case, the domain name record evidence submitted by the complainant showed that between October 24, 2019 and March 16, 2020, the respondent became the registrant of the disputed domain name. On September 13, 2021, the domain name registrar confirmed that the “registrant information of the disputed domain name was last changed on December 3, 2019, and the registrant was changed from Cheng Yahuan to the current respondent Shijiazhuang Maihang Network Technology Co., Ltd. The respondent claimed that Cheng Yahuan purchased the disputed domain name from a third party on April 1, 2019, and that the disputed domain name was initially registered under Cheng Yahuan’s name. Later, in order to facilitate the ICP filing of the website, the disputed domain name was changed to the respondent’s name. Regardless of whether the disputed domain name is registered under Cheng Yahuan’s name or under the name of the respondent, the disputed domain name is actually controlled by the respondent. Therefore, the date when the respondent actually purchased and began to hold the disputed domain name was April 1, 2019. At that time, the “Resolution” (2014) was still in effect, so the “Resolution” (2014) should be applied, that is, the disputed domain name If the domain name registration period has expired for two years, the domain name dispute resolution agency will not accept it. The complainant filed this complaint on September 9, 2021, which exceeded the two-year complaint period. Therefore, the center should not accept this complaint.
The expert group noted that Article 19 of the “Solution” stipulates that “China Internet Network Information Center may modify these Measures in accordance with the development of Internet and domain name technology, as well as changes in relevant Chinese laws, regulations, and policies. The method is published on the website. The new method does not apply to domain name disputes that have been submitted to the domain name dispute resolution agency before the amendment of this method.
The revised method automatically becomes part of the domain name registration agreement between the domain name holder and the domain name registrar. If the domain name holder does not agree to accept the dispute resolution method or its revised text, it shall promptly notify the domain name registrar. After receiving the notice, the domain name registrar will reserve the domain name service for 30 days, and after 30 days, the domain name will be cancelled. ”
Article 22 of the “Measures” further stipulates that “These measures shall come into force on June 18, 2019. The “China Internet Network Information Center’s National Top-Level Domain Dispute Resolution Measures on November 21, 2014″ shall be repealed at the same time.”
The expert group believes that, according to Article 19 of the “Solution”, even if, as the respondent said, it obtained and actually controlled the disputed domain name in April 2019, the revised “Solution” is from June 2019 The “Solution” implemented on the 18th will still automatically become part of the domain name registration agreement between the domain name holder, the respondent and the domain name registrar. If the respondent does not agree to be bound by the dispute resolution method or its revised text, it shall promptly notify the domain name registrar. After receiving the notice, the domain name registrar will reserve the domain name service for 30 days, and after 30 days, the domain name will be cancelled. Since the disputed domain name was purchased by Cheng Yahuan in April 2019 and transferred to the name of the respondent, it has not been cancelled. Therefore, the expert group determined that this complaint should be applied to the “Solutions” that will be implemented on June 18, 2019.
According to Article 2 of the “Solution”:
“These Measures apply to disputes arising from the registration or use of domain names. The domain name dispute resolution agency will not accept the disputed domain name registration period for three years.”
According to Article 9 of the “Solution”:
“If the domain name holder under complaint has one of the following circumstances, his behavior constitutes malicious registration or use of the domain name:
(1) The purpose of registering or assigning a domain name is to sell, rent or transfer the domain name to the complainant or its competitor who is the owner of civil rights in order to obtain illegitimate benefits;
(2) Registering the name or logo that others have legal rights and interests as their own domain names, so as to prevent others from using the names or logos that they have legal rights and interests in the form of domain names on the Internet;
(3) The domain name is registered or transferred to damage the reputation of the complainant, disrupt the normal business activities of the complainant, or confuse the difference between the complainant and the complainant, and mislead the public;
(4) Other malicious situations. ”
The expert group believes that the three-year registration period referred to in Article 2 of the Settlement Measures should start when the current registrant obtains the disputed domain name. The expert group also noted the use of “registration” or “acquisition” in Article 9(1) and Article 9(3) of the Settlement.
According to the file materials of this case, after considering various possibilities (on the balance of probabilities), the expert group determined that the current registrant (ie, the respondent) of the disputed domain name was held between October 24, 2019 and March 16, 2020. According to the opinion of the expert group, the disputed domain name obtained in this case constitutes a new registration as far as the “Solution” is concerned. In view of this, the complaint satisfies the three-year time limit stipulated in Article 2 of the Settlement Measures.
Although the respondent maintains that regardless of whether the disputed domain name is registered under Cheng Yahuan’s name or under the name of the respondent, the disputed domain name is actually controlled by the respondent. However, the evidence submitted by the respondent was not sufficient to prove that the disputed domain name was actually controlled by the respondent as of April 1, 2019. Even if the respondent did actually control the disputed domain name from April 1, 2019, the complaint still meets the three-year period stipulated in Article 2 of the “Solution”.
6.3. Substantive issuesAccording to Article 8 of the Settlement Measures, complaints that meet the following conditions shall be supported:
(1) The domain name under complaint is the same as the name or logo of the complainant’s civil rights, or is similar enough to cause confusion;
(2) The domain name holder under complaint does not have legal rights and interests in the domain name or its main parts;
(3) The domain name holder under complaint has malicious intent in the registration or use of the domain name.
The complainant must provide evidence in the administrative procedure to prove that the above three situations exist at the same time.
A. Same or confusingly similar names or signs with the complainant’s civil rightsThe expert group determined that the complainant obtained the registered trademark right of IMDB in China.
The disputed domain name contains the entire IMDB trademark. Except for the country code Top-Level Domain “.cn”, the disputed domain name is exactly the same as the IMDB trademark of the complainant.
In summary, the expert group determined that the disputed domain name is the same as the trademark in which the complainant has civil rights or is similar enough to cause confusion. In view of this, the expert group determined that the complaint has met the first condition in Article 8 of the “Solution”.
B. Rights or legitimate interestsIn this case, the complainant did not authorize, permit or allow the respondent to register or use the disputed domain name or use its trademark. The complainant has the right to exclusive use of the IMDB trademark, and the time of its registration or use of the trademark respectively precedes the time when the complainant obtains the disputed domain name and uses it. The expert group believes that the complainant has provided preliminary evidence to prove that the respondent does not have any legal rights and interests in the disputed domain name, thus transferring the responsibility for refuting the presumption to the respondent.
The respondent maintains that before the respondent receives the complaint served by the center, the respondent has used the disputed domain name in a reasonable manner, and there is no intention to mislead consumers in order to obtain commercial benefits. However, the evidence of the case shows that when the complaint was submitted, the respondent advertised the disputed domain name website as “IMDB中文网”, claimed to provide “imdb score”, and used a prominent place on the homepage of the disputed domain name website that was highly similar to the complainant’s yellow IMDB trademark. IMDB written in yellow. At the same time, the respondent provided “movie box office rankings, imdb ratings, film reviews, finding the best movies” and other services that were highly similar to the complainant through the disputed domain name website. Therefore, the expert group determined that the disputed domain name was not used to provide goods or services in good faith, and the respondent did not use the disputed domain name reasonably or legally for non-commercial purposes. Moreover, there is no evidence in this case that the respondent has obtained any trademark rights related to the disputed domain name, nor is there evidence that the respondent has gained a certain degree of popularity due to the disputed domain name.
In addition, the respondent’s use of a domain name cannot be considered fair use if it incorrectly implies a connection with the trademark owner. The expert group believes that the disputed domain name that is exactly the same as the complainant’s trademark has a high risk of implying that the disputed domain name is related to the complainant.
In summary, the expert group determined that after the complainant had provided preliminary evidence proving that the respondent did not have any legal rights and interests in the disputed domain name, the respondent failed to provide any favorable evidence to prove that it had legal rights in the disputed domain name. In view of this, the expert group determined that the complaint has met the second condition in Article 8 of the “Solution”.
C. Malicious registration or use of domain namesAs for whether the respondent has malicious intent, it should be calculated from the time when the respondent obtains or obtains the disputed domain name, that is, 2019. The respondent claimed that he did not know the existence of the complainant and its IMDB registered trademark when he was assigned the disputed domain name. The expert group noted that when the respondent obtained the disputed domain name, the complainant had used the IMDB name for more than 20 years. After the complainant has used and publicized the IMDB trademark for many years (including in China), the expert group determined that the complainant’s IMDB trademark enjoys a high reputation in film ratings and other related industries, and that the complainant registered and used the trademark in China first When the respondent obtained the disputed domain name and its use. Except for the national and regional top-level domain name “.cn”, the disputed domain name is exactly the same as the IMDB trademark of the complainant, and the disputed domain name website says “IMDB中文网”, claiming to provide “imdb score”, and the prominent position of the website is also used and complained The human yellow IMDB trademark is highly similar to the IMDB written in yellow. In view of the above reasons, the expert group determined that the respondent knew the complainant and its IMDB trademark when he obtained the disputed domain name. In addition, the aforementioned use of the disputed domain name by the respondent not only confuses the difference between the complainant and the complainant, misleads the public, but also undermines the complainant’s normal business activities and is malicious.
In view of the above reasons, the expert group determined that the registration and use of the disputed domain name was malicious. In view of this, the expert group determined that the complaint has met the third condition in Article 8 of the “Solution”.
7. RulingIn view of all the above reasons, in accordance with Article 14 of the “Solution” and Article 40 of the “Rules of Procedure”, the expert group ruled to transfer the disputed domain name <imdb.cn> to the complainant.
Sebastian MW Hughes is the
sole expert
Date: November 3, 2012
