202012.09

Article 2 of the cnDRP: the issue of the starting point of the limitation period in case of a domain name that has been assigned

Article 2 of the cnDRP designates the date of registration of the domain name as the limitation period’s sole starting point. The central question is the following: should the domain name transfer be treated as a new registration? Two options are possible. First, if it is considered that the change in ownership does not constitute a new registration, the domain name creation date is more than three years old. Accordingly, the deadline has expired, and the authority with the power to decide the matter must declare the complaint inadmissible. Second, if we consider, on the contrary, that the assignment of a domain name should be assimilated to a new registration, the latter causes a further period of three years to run. As a result, the time limit for taking action has not necessarily expired, and therefore the complaint can be deemed admissible.

The jurisprudence formed by the decisions of the Hong Kong International Arbitration Center undoubtedly favors the second option. The benchmark decision, DCN-1500641, has been repeatedly supported [1]. This solution is based on several foundations.

First, Article 9(a) of the cnDRP covers the registration (or creation) of the domain name and its acquisition.

Second, in the paragraph titled “6.1 Renewal, Re-registration and Transfer “, the Guide to HKIAC Domain Name Dispute Resolution supports the position that the acquisition of a domain name constitutes a new registration:

The time of registration is crucial in determining bad faith. Usually the critical date for determining whether a domain name has been registered in bad faith is the original date of registration. The general consensus is that a renewal of registration represents a continuation of registration, and is not a restart of the registrant’s representation and warranty covenants.52 However, transfer of the domain name to subsequent holders, which usually involves direct sales or auction of a domain name on the secondary market, has been considered a new registration. In Beijing Suning Shangpin Appliance Co. Ltd. v. Eryue (ADNDRC Case No. HK-1500764, 17 September 2015), the panel stated that even if the predecessor has previously used the domain name in good faith, this good faith can not be carried over to cover acts of the subsequent domain name purchaser.” (hkiac.org).

This position is also that of the case law formed by the panelists of the World Intellectual Property Organization (WIPO):

the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions.” (WIPO Jurisprudential Overview, para. 3.9).

This solution finds its justification in contract theory and tort theory.

First, concerning contract theory, it suffices to highlight that the limitation period is strictly connected to the dispute resolution clause of the most recent registration contract. However, the dispute settlement clause of contract no. 1 (between the assignor and the registrar) cannot remain in contract no. 2 (between the assignee and the registrar, which may differ from the one in agreement no. 1). Indeed, contract no. 1 no longer has any effect on the domain name concerned and is no longer enforceable against third parties. The domain name has become the subject of another registration contract (contract no. 2) that is materialized by the transcription of the new owner in the WhoIs file, an update which is brought to third parties’ attention. Also, for the latter (in particular trademark owners), the transcription of the assignee’s name in the WhoIs file must be assimilated to a new fact, which justifies the start of a new limitation period. It follows that the applicable dispute settlement clause is the one incorporated in contract no. 2. This clause, like all these DRP-type clauses, constitutes an erga omnes offer for resolving disputes. When a third party files a complaint, this party accepts the offer stated in this clause and thus expresses his consent to it. Therefore, the contract for the settlement of the dispute is formed when the third party files the complaint. This event also coincides with the interruption of the limitation period.

Secondly, and finally, concerning tort theory, the new holder of the domain name has the use and control over it. Therefore, he must be held liable for the use he makes of it. And it must be bear in mind that the new holder of the domain name may choose to use it differently from its predecessor, for example, in a way that would infringe third parties’ intellectual property rights.


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