Comments on IRT Final Report ( Leslie, Guan Yuanyuan)

[asmartlawyer <asmartlawyer@xxxxxxx>]

Comments of Leslie, Guan Yuanyuan

To the Open Comment Period of the Implementation Recommendation Team (IRT)

July 4th, 2009

 

LEGAL ADVICE ON IRT FINAL REPORT

 

First, different countries have different jurisdiction. IRT does not take into 
account differences in trademark law in different countries.

 

Different countries around the world with different legal culture, different 
legal traditions, and the legal system or the basic principles are very 
different as well. A specific trade mark which is registered in their own 
country as the well-known trademark does not necessarily automatically be 
protected in other countries. Because of different basic principles of 
trademark law in different countries, the trade mark owner should comply with 
the provisions of the Trademark Law of other countries, so that this particular 
trade mark can be protected in other countries. For example, the basic 
principles of China Trademark Law refer to the basic norms which should be 
followed during the establishment and protection of trademark rights. There are 
six basic principles in China Trademark Law: the principle of registration; the 
principle of applying earlier; the principle of good faith; the principle of 
voluntary registration; centralized registration, classified management 
principles and the principle of parallelism of administrative protection and 
judicial protection. Especially, the principles which reflect the difference of 
China trademark law compared with the other countries are as follows: 

 

(A)  The principle of registration 

 

Trademark registration is a process which confirms the attribution of the 
trademark exclusive right. There are two basic principles used to confirm the 
attribution of the trademark exclusive right which are adopted by countries all 
over the world. One is the principle of registration, and the other is the 
principle of use. The principle of registration means that the trademark 
exclusive right is obtained by registration. Regardless of whether or not to 
use the trade mark, as long as consistent with the provisions of the Trademark 
Law, and after the trademark registration is approved by the competent 
authority, the applicant shall obtain the trademark exclusive right which is 
protected by law. The principle of use means that the exclusive right can be 
generated by using the trademark. According to this principle, the first user 
can get the exclusive right to use trademarks. 

 

The Article III of China Trademark Law prescribes that the trademark which is 
approved for registration by the Trademark Office, is the registered trademark. 
And the registrant owns the exclusive right to use the trademark which is 
protected by law. It shows that China Trademark Law adopts the principle of 
registration. 

 

(B)  Centralized registration, classified management principles 

 

Centralized registration, classified management principles are prominent 
characteristics of China trademark legal system. According to the market 
economics and trademark’s own characteristics, trademark registration should 
break the state of sector division and region division. And the Trademark 
Office should be responsible for centralized review of trademarks and approval 
of registration. Hereby, the Article II of Trademark Law prescribes that the 
Trademark Office which is under the State Industry and Commerce Administration 
Office, is in charge of the national trademark registration and management. It 
decides that the national trademark registration will be charged by the 
Trademark Office which is under the State Industry and Commerce Administration 
Office, and any other institution has no right to charge trademark 
registration. It clearly expresses Centralized registration, classified 
management principles. Classified management means that industrial and 
commercial administrative organs at all level charge trademark management in 
accordance with the law. To carry out the different levels of management, is in 
favor of the close integration of trademark management and the local actual 
situation. And it can make the administration of trademarks regular and 
institutionalized. 

 

(C)  The principle of parallelism of administrative protection and judicial 
protection 

 

This is another prominent feature of China trademark legal system. Trademark 
Lawstipulates that the trademark infringement, with which the infringed can 
choose industrial and commercial administrative organs or the people's court to 
deal. If the infringed complaints to the industrial and commercial 
administration authorities, industrial and commercial administrative organs 
basing on the effective evidence provided by infringed or the evidence made by 
their own investigation, may order the infringer to immediately cease its 
violations and compensate the infringed for loss, and fine the infringer 
violations as well. In that case, the parties have discontentment of the 
punishment decision made by Industrial and commercial administrative organs, 
they can go to the people's court to start a lawsuit. The principle of parallel 
protection facilitates the resolution of trademark disputes and is conducive to 
the protection of trademark exclusive right. 

 

 

These are the characteristics of China Trademark Law hereinbefore and the 
Trademark Law is very different from the United States Trademark Law. First, 
the United States Trademark Law is based on the principle of use as a basic 
principle. It not only adopts the principle of first use to judge the 
trademark’s attribution, but also maintains trademark right basing on the use. 
It can be said that in the United States, there is no trade mark without use. 
Second, the United States trademark registration is divided into federal 
registration and state registration. This is highly different from the 
principle of centralized registration in China trademark law. Besides the 
United States and China, the Trademark Law of any other country has its own 
characteristics. IRT ignores the differences in different jurisdictions, which 
does not conform to reality and IRT report can not gain global consensus. 

 

Second, speaking from the legal theory, IRT does not correctly coordinate 
conflicts of the trademark rights and domain name rights. 

 

There is too much emphasis on the interests of trademark holders and highly 
neglect of the interests of domain name registrants in IRT report. In essence, 
it embodies the neglect of trademark rights and only attaching importance to 
domain name rights. 

 

With the development of Internet technology, more and more individuals, 
companies, organizations, even government departments cannot survive without 
the internet. In particular, the domain name system has played an important 
role not only in e-commerce but also e-government. In that case, we should 
consider the balance between the interests of different interest groups, not 
just concerned about the interests of a specific group. “A terrible situation, 
the trademark owner has the heaven-born exclusive right, which excludes others 
to adopt a common name to the registration and use of domain names.” ① 
Therefore, IRT report only emphasizes the trademark right and ignores domain 
name rights. It doesn’t meet legal requirements, and is neither objective nor 
impartial. 

 

Third, mechanisms advocated by IRT go far beyond the scope of ICANN's 
functions. 

 

According to the U.S. Government “White Paper” in 1998, the purpose of ICANN is 
“to manage and perform a specific set of functions related to coordination of 
the domain name system, including the authority necessary to: 

 

(A)    Set policy for and direct allocation of IP number blocks to regional 
Internet number registries; 

(B) Supervise operation of the authoritative Internet root server system; 

(C) Supervise policy for determining the circumstances under which new TLDs are 
added to the root system; and 

(D)Coordinate the assignment of other Internet technical parameters as needed 
to maintain universal connectivity on the Internet.

 

The IRT final report actually gives ICANN a new function, which is, supervision 
and protection of trademark rights owned by the specific group-the trademark 
holders (listed in the globally protected trademark list), including the 
criteria made in ICANN policies to decide whether the trademark should be 
protected or not and what kinds of domain names should be protectively 
reserved. Objectively speaking, whether the trademark is well-known, whether 
the trademark or specific name needs to be protected, is judged by the proper 
authorities. ICANN doesn’t have this authoritative function. ICANN should not 
be responsible for judging whether the domain name registration infringes the 
right of a third party. Therefore, there is no reasonable basis that ICANN 
reserves domain names referring to civil rights and interests. 

 

Trademark holders have the right and obligation to safeguard their own 
trademarks. When their trademarks are infringed by others, they can apply for 
arbitration through UDRP or go to courts to claim termination of the 
infringement and damage compensation. 

 

Fourth, whereas no change of the essential social or legal issues from when 
UDRP is enacted until now, there is no need for implementation of mechanisms 
advocated by IRT.

 

As we known, in order to resolve domain name disputes, the World Intellectual 
Property Organization drew up and published the “Uniform Domain Name Dispute 
Resolution Policy” (UDRP) in 1999. It has been nearly 10 years from then. In 
fact, UDRP has gained global consensus on the scope of trademark protection and 
the evaluation criteria. A decade now, nature of social or legal issues has not 
changed, which is still rights’ conflict between domain name registrants and 
trademark holders. Therefore, mechanisms advocated by IRT should be 
unnecessarily implemented. 

 

Fifth, IRT report is unable to solve disputes of domain name thoroughly.

 

As the second point above mentioned，conflicts of the trademark rights and 
domain name rights, in fact, fundamentally speaking, the root of the domain 
name dispute lies in conflicts of the current domain name registration 
management system and trademark registration management system. To solve domain 
name disputes completely, domain name registration management system must be 
coordinated with the trademark registration management system. After 100 years’ 
development, modern international management system of trademark registration 
has formed the trademark protection’s complete system of “Paris Convention”, 
“Madrid Agreement”, “Nice Agreement”, and “Trade-Related Aspects of 
Intellectual Property Right Protocol” made by the World Trade Organization. And 
different countries have also established a mature system of trademark law. 
Therefore, it is entirely possible to build a new domain name registration 
management system in terms of the successful experience of international 
trademark registration management system. Through international cooperation, by 
the way of international treaties, and through the effective functioning of 
international organizations, domain name disputes can be ultimately resolved. 

 

In conflicts of trademark rights and domain name rights, IRT advocates measures 
to strengthen the protection of trademark rights which greatly hinders the 
development of the domain name system. It will continue to exacerbate the 
conflicts between two rights and the right owners’ interests can not be evenly 
resolved, which leads to conflict intensification and results in very serious 
consequences that ultimately each country’s government has to take legal 
enforcement to establish their own respective domain name system for domain 
name right protection. In that case, ICANN’s the authority position in the 
global Internet domain name system will be shaken. 

 

Closing Comment

 

In summary, IRT ignores the difference in state’s jurisdictions, ignores the 
protection of domain name registrants’ rights, and with the paranoiac and 
simple intention protects the rights of trademark holders. It not only further 
exacerbates conflicts of domain name and trademark, but also misleads ICANN to 
implement measures beyond the scope of the ICANN functions to limit the domain 
name registration which will seriously hinders the development of the global 
domain name system. Finally, it will lead to shakiness of ICANN’s authority 
position in the global Internet domain name system. Therefore, IRT report is 
neither objective nor impartial, it is not possible to resolve domain name 
disputes thoroughly, and it can not be globally agreed on.

 

 

 

 

 

 

Leslie, Guan Yuanyuan

 

guanyy@xxxxxxxxxxx

asmartlawyer@xxxxxxx

 

Legal Supervisor，CONAC （China Organizational Name Administration Center）

New member，   NCUC  （Noncommercial Users Constituency）

 

 

 

 

 

 

① J. Crew Int'l v. crew. Com (crew. com) D200020054, available at http: / / 
arbiter. Wipo. Int / domains / decisions / html / 

d200020054. htm.

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