Domain name disputes are gaining more awareness in Hong Kong. In the event of an identical or confusingly similar domain name being registered by a third party, a trademark owner can seek remedies through (i) domain name dispute resolution by arbitration; (ii) civil litigation in the courts of Hong Kong; and / or (iii) criminal litigation in the courts of Hong Kong if the use of domain name involves criminal activities e.g. infringement of copyrights or fake imitation products.
In many situations, Domain Name Dispute Arbitration is the preferred choice of seeking remedies because its proceedings are relatively quick, low-cost and the decision is often final.
In the recent case of Alibaba Group Holding Limited vs Guangzhou Mama Television Ltd, the Complainant, Alibaba Group Holding Limited was the registrant of a number of trademarks incorporating the word mark “ALIMAMA” and owner of online advertisement trading platform www.alimama.com. The Respondent, “Guangzhou Mama Television Ltd”, was the registrant and the owner of “alimama.org”.
On 8 October 2014, the Complainant filed a complaint in the form of arbitration with the Hong Kong office of Asian Domain Name Dispute Resolution Centre (the “ADNDRC”) against the Respondent.
The Domain Name Dispute Arbitration process could be used in this case because the domain name registrant i.e. the Respondent in this case had agreed in the registration agreement to resolve disputes regarding the domain name by way of arbitration.
In order to successfully obtain a transfer of “alimama.org” from the Respondent to the Complainant, the Complainant needs to establish the following three elements :-
(a) the disputed domain name, “alimama.org”, registered by the Respondent, was identical or confusingly similar to the Complainant’s mark and service brand, “ALIMAMA” – the first element;
(b) the Respondent had no rights or legitimate interests in respect of the disputed domain name – the second element; and
(c) the Respondent registered or used the disputed domain name in bad faith – the third element.
In relation to the first element, the Complainant stated that the only difference between “alimama.org” and “ALIMAMA” was the “.org” at the end of “alimama.org”.
In relation to the second element, the Complainant stated that :-
(a) the Complainant applied for the “ALIMAMA” mark in 1999 and has registered the “ALIMAMA” trade mark since 2001;
(b) the word “ALIMAMA” did not in appearance, in meaning nor in sound have any connection with the name of the Respondent; and
(c) the Complainant did not authorize or license the Respondent to use the ALIMAMA trade mark.
In relation to the third element, the Complainant stated that :-
(a) the fact that the Respondent had registered “alimama.org” without any right or legitimate interest was already evidence of bad faith; and
(b) the “ALIMAMA” trade mark had achieved wide recognition.
The Respondent was given opportunities to submit responses in accordance with the Rules of Uniform Domain Name Dispute Resolution Policy (the “Rules”), to prove that (i) the disputed domain name, i.e. “alimama.org”, was not identical nor confusingly similar to the Complainant’s mark, i.e. “ALIMAMA”; (ii) the Respondent had rights or legitimate interests in respect of the disputed domain name; and / or (iii) the Respondent had registered or used the disputed domain name not in bad faith.
The Respondent did not contend the first element but submitted that it had the relevant legitimate rights and interest because :-
(a) The Respondent’s owner registered a company with the name “Alimama International Group Limited” in Hong Kong in 2012;
(b) The Respondent’s owner created the name of “alimama” , which is the Chinese Pinyin of ; and
© “alimama.org” was registered for non-commercial use.
Panelist’s Opinion and Decision
The assessing Panel in accordance with the Rules and Paragraph 4(a) of Uniform Domain Name Dispute Resolution Policy for the Domain Name Dispute Resolution approved by the Internet Corporation for Assigned Names and Numbers held that the Complainant had successfully established all the three elements required for the transfer of the domain name from the Respondent. In reaching the decision, the Panel did not accept that the Respondent had rights or legitimate interests from evidence on the origin and the creation of the idea behind , the Chinese name of “alimama”. Also, the Panel inferred that the Respondent must have prior knowledge about the existence of the Complainant’s mark, “ALIMAMA”. The Panel noted that the Respondent had clearly intended to make commercial gains by inviting implantable advertisements on its website resolved by “alimama.org”. The Panel therefore found that the disputed domain name, “alimama.org”, had been registered and used in bad faith.
The usual remedies available to the successful Complainant of a domain name dispute arbitration include an order to (i) transfer the disputed domain name to the Complainant; or (ii) cancel the disputed domain name.
In the above case, the Panel had ordered a transfer of “alimama.org” from the Respondent to the Complainant.
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