Study On The Conflict Of Domain Name And Trademark And Its Resolution

With the rapid expansion of E-commerce, the conflicts between domain name andtrademark get more and more. This dissertation takes P&G v. Shanghai Chen Xuan IntelligentTechnology Development Co. Ltd. as a breakthrough point, collecting related works, thesis,dissertations and cases in hope to find a reasonable and workable way to settle the disputesbetween the domain name owners and trademark-owners.Part I gives a brief introduction to the basic information of the case and the controversialfocuses of the case. The controversial focuses of the case are identification of famoustrademark, whether or not defendant’s behavior is trademark infringement, whether or notdefendant’s behavior is unfair competition and scramble for domain name.Part II is theoretical analysis about controversial focuses of the case. First, explain thenotion of famous trademark and the standards of identifying famous trademark. Second,analyzing how to figure out whether or not the registration of a domain name is trademarkinfringement. The behaviors listed by Trademark Law as trademark infringement behaviorsdo not include all kinds of cyber-squatting. Therefore, when identifying whether or notcyber-squatting is trademark infringement, besides considering whether or not the registrationand use of the domain-name cause the consumers’ confusion, we should also consider thatwhether or not the registration and use of the domain-name undermine the strength of themark or impair mark-owner’s good reputation. Additionally, if the use of trademark asdomain-name is in line with fair use, trademark infringement dose not be found. Third,discussing whether or not Law Against Unfair Competition can be applied to adjustcyber-squatting, introduce the types of bad faith registration, analyze how to identifyregistration with bad faith and the fair uses that can rule out the existence of bad faith. Fourthand last, explain the notion of scramble for domain name, which is different from trademarkinfringement and unfair competition caused by cyber-squatting. Both parties of the disputehave legal claims to the domain name. Therefore, in this situation, there is not trademark infringement or unfair competition. The domain name belongs to the one who is the first toapply the registration. However, if other claimers register similar domain names, meantime,take some measures to mark sure consumers won’t confuse the source of goods and service.Then the first registrant cannot stop the registration and use of the similar domain names byother claimersPart III gives some suggestions to settle the disputes between domain name owner andtrademark owner. For the law and legislation, they should be perfected and improved, in orderto provide better guide for the practice of law. For the application of law, the judge shouldfirst correctly tell disputes caused by cyber-squatting from scrambles for domain name. Thenthe judge should insist the principle of equity to make sure that both trademark owner’s anddomain name owner’s legitimate right and interest get fully protection. Therefore, justice getsserved.