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In order to have a successful commercial presence on the 'World Wide Web' (www), it is vital that your potential clients or customers can access your web page by reference to an easily remembered “domain name”. Your domain name serves a function very similar to that of a trademark. Registration of domain names in Hong Kong operates on a first-come, first-served basis.
"Cybersuatting" is the abuse of this domain name registration system. Most cybersuatters register domain names with the intention of selling them back to their rightful owners at an unreasonably high price and thus making a handsome profit during the process. If your preferred domain name is currently occupied by a cybersuatter, chances are your potential clients or customers currently being turned away and redirected to an irrelevant, or even obscene and offensive web page somewhere else. Worst still, they may be redirected to your business rivals.
Since 1st June 2001, the "Hong Kong Domain Name Registration Company Limited" (HKDNR) has put in place a new set of policies governing the registration of the .hk top level domain names. These less restrictive policies are expected to better cater for the needs of businesses operating in Hong Kong.
Hong Kong businesses can now register multiple .hk domain names (they could only register one prior to the establishment of the HKDNR). Further, an arbitration service provided by the Hong Kong International Arbitration Centre (HKIAC) is now in place to deal with disputes over domain name registrations.
A victim of cybersuatting activities can of course lodge a formal complaint with the HKDNR and have the dispute resolved by arbitration at the HKIAC. However, the remedies available to a complainant before the HKIAC Arbitration Panel would be limited to the cancellation or transfer of the domain name in dispute.
The complaint will be successful if the complainant can prove that:
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the domain name in dispute is identical or confusingly similar to a trademark or service mark in Hong Kong in which the complainant has rights; and
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the current possessor of the domain name in dispute has no rights or legitimate interests in that domain name; and
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| (iii) |
the domain name in dispute has been registered and is being used in bad faith.
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Also, if a person registered a domain name in Hong Kong and used it for business purposes on the Internet in a way which deliberately mislead the public that his goods come from the trader of a registered trademark, he would have committed a criminal offence under the Trade Description Ordinance (Cap.362). The maximum penalty for a conviction on indictment is a fine of HK$500,000 and imprisonment for 5 years.
Furthermore, trading on the Internet using a domain name identical or misleadingly similar to a registered trademark amounts to a "trade mark infringement". Civil actions can be brought against the infringer and a number of legal remedies (such as injunctions and damages) are available.
Finally, Internet trading that takes unfair advantage of the trading reputation of another legal person (who has a trading reputation in HK) and causes loss to the other person amounts to "passing off" at common law, which is also a valid ground on which civil actions can be brought.
Although there are many ways by which we can recoup a domain name from a cybersquatter, ultimately it can only be done if the domain name's rightful owner is aware of his rights and cares to take the necessary actions. If you would like to enforce your legal rights but do not know for sure what to do, or indeed how to do it, do contact us and we will take care of the matter.
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