cnDRP: Blablacar.com.cn transferred while Blablacar.cn rejected, why?
Blablacar (Comuto) is one of the largest online marketplaces for carpooling in Europe, with more than 60 million users, including 8 million active drivers. It is highly important for any Internet B2C company to defend their domain name portfolios allowing clients to efficiently find them online.
While Blablacar’s efforts in China to obtaining ‘Blablacar.com.cn’ and ‘Blablacar.cn’ through cnDRP (CNNIC ccTLD Dispute Resolution Policy), Blablacar encountered difficulties and surprises: Blablacar.cn (HKIAC, DCN-1400593) was successfully transferred to Blablacar while the request for Blablacar.com.cn (HKIAC, DCN-1400594) was rejected.
The cnDRP complaints about the two domain names were filed in October 2014. It is interesting to note that the complaints were filed separately since the registrants were presumably two separate individuals, Zhimao LIN (林智茂) and Qingmao LIN (林清茂). Since their names are highly similar in Chinese characters, this may imply a potential link between the two registrants. The two domain name disputes were therefore assigned to two independent panels, with different outcomes and different languages.
The decision regarding Blablacar.com.cn was rendered in Chinese, while the one concerning Blablacar.cn was drafted in English. Pursuant to article 6 of the cnDRP Principles “[t]he language of the domain name dispute resolution proceedings shall be Chinese unless otherwise agreed by the parties or determined by the Panel“. Similarly, article 8 of the cnDRP Rules provides: “[u]nless otherwise agreed by the Parties or determined in exceptional cases by the Panel, the language of the domain name dispute resolution proceedings shall be Chinese. The Panel may order that any documents submitted in languages other than Chinese be wholly or partially translated into Chinese.”
The Panel of Blablacar.cn decided to use English for the following this legal reasoning:
“The Panel, nevertheless, decide to proceed with this case in English in consideration of the value of efficiency. Generally speaking, a panel must not, to pursue the value of efficiency, deprive of a party’s equal right of defense or of the right to fair trial. However, there is an exception: if the Panel has solid ground to believe that the case can be decided merely on one party’s argument regardless of whether the other party submits any defense or counter-argument (i.e., similar to “summary judgment” in common law countries), the panel may ignore such other party’s right to defence or counter-argument because such ignorance does not harm such other party’s interest.
(…) even if all facts stated in the Complaint are true, and even if the Respondent does not defend itself, the Panel would decide in favor of the Respondent. Therefore, it does not prejudice to the Respondent’s interest to proceed with the case in English and to ignore his right to defend himself.“
Different legal reasoning
In the Blablacar.cn case, the Panel rejected the transfer request mainly based on the sole reason that Blablacar did not have a registered trademark in China, regardless of its various trademarks in other jurisdictions.
With almost the same factual evidence as in the Blabalcar.cn case, on one hand, the Panel in the Blablacar.com.cn also confirmed that Blablacar did not have a registered Chinese trademark and that its foreign trademarks were not protected under Chinese law. The Panel came to the conclusion that the complainant did not hold any trademark rights as required under the cnDRP rules. On the other hand, the same Panel opined that the evidence of trademark use provided by Blablacar was sufficient to demonstrate that Blablacar might claim the name rights of a well-known commodity on the basis of Article 5 of the Anti-Unfair Competition Law 1993.
The first condition of cnDRP slightly broader compared to UDRP
One might raise eyebrows upon reading that Blablacar won a cnDRP without any registered Chinese trademark since the cnDRP rule was created to mirror the UDRP (Uniform Domain-Name Dispute-Resolution Policy) which requires that a complaint must own the trademark or service mark in question. In fact, this interpretation appears to be not 100% accurate, because the first condition under the cnDRP rule is recited as:
“the disputed domain name is identical with or confusingly similar to the Complaint’s name or mark in which the Complainant has civil rights or interests.“
To compare, the first condition of a UDRP complaint is recited as:
“the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights.“
In other words, a complaint may meet the abovementioned condition of cnDRP if its eligibility of rights on the target name under the Chinese law can be proved. These can include at least 1) rights of individual’s name (under Chinese Civil Law), 2) well-known unregistered trademark rights (under Chinese Trademark Law) and 3) name, packaging and decoration rights of a well-known commodity (under Anti-Unfair Competition Law 1993) which is the point of contention in the Blablacar.cn case.
Blablacar: “Well-known” in China?
Based on the two published decisions, it can be inferred that the complainant Blablacar may have submitted the same evidence to this specific issue, including 1) use evidence of trademark ‘Blablacar’ in European countries since 2011; 2) public news about the business of ‘Blablacar’ in both English and Chinese; and 3) searching results from Google and Baidu, suggesting that ‘Blablacar’ is referred to the Complaint on Chinese websites, etc. However, regarding the question of whether Blablacar is, in fact, well-known in China, the two panels arrived at contradicting conclusions.
The Panel in Blablacar.cn considered that the evidence offered cannot prove the Complainant’s actual use of the “Blablacar” brand in China, and thus there is no basis of “well-known” status of the unregistered mark of “Blablacar”, under Chinese Trademark Law.
On the contrary, the Panel in Blablacar.com.cn took another approach, indicating that
“there is no further information of the Respondent Zhimao LIN such as residence address or occupation, aside from his/her name. The registration of ‘Blablacar.cn’, in the Panel’s opinion, is most likely not a coincidence because of the accessibility of the Complainant’s information through the internet. The Panel, from the view of balancing interests and possibilities, determined that the Complainant may claim the name rights of a well-known commodity under the Anti-Unfair Competition Law of PRC 1993.”
It is worth noting that even though the specific references of laws were different, the term used, “well-known”, was the same which appeared to imply the same definition and requirements. It is in our opinion that the adaptation of competition law perspective may have guided the reasoning of the Panel’s decision to transfer Blablacar.come.cn while it seems quite questionable since the evidence submitted by Blablacar was insufficient to prove the status of “well-known” according to the Chinese law practice.
From “well-known” to “with certain influence” since 2018
The two decisions of Blablacar were issued in early 2015, while the Chinese Anti-Unfair Competition Law was later amended and enforced at the beginning of 2018. Under the new law, the “name, packaging and decoration rights of a well-known commodity” is now amended to “name, packaging and decoration rights of a commodity with certain influence” (Article 6). Further, this article also prohibits third parties from “[u]sing without permission a label identical or similar to the name, packaging or decoration, among others, of another person’s commodity with certain influence”.
Based on a literal interpretation, this specific amendment from “well known” to “with certain influence” may substantially lower the requirements for claiming such rights.
This is certainly good news especially for small-or-medium-sized foreign brand owners who do not own a registered Chinese trademark prior to the registration of certain Chinese domain names such as .cn and .com.cn and desperately need to enforce their rights through cnDRP.
It may be quite challenging to obtain the domain name of your brand back through cnDRP without any prior registration of a Chinese trademark, but at least, the controversial decision of ‘Blablar.cn’ might give trademark owners new hope, and with the new Chinese Anti-Unfair Competition Law, there is more reason to be optimistic.