- Powered by Yip Tse & Tang, Solicitors & Notaries 葉謝鄧律師行

HiTRUST.COM (HK) Incorporated Limited
Hong Kong Domain Name Registration Company Limited ("HKDNR")

Conflict between an Internet domain name and a registered trademark

"Cybersquatter" refers to a person who registers a trademark as a domain name hoping to later profit by reselling the domain name to the trademark owner. An aggressive cybersquatter may even send messages to the trade mark owner soliciting a sale. Passive cybersquatter may just leave the domain name unused or direct it to a one-page homepage indicating that the domain name is "for sale".

In the USA, a trade mark owner believing that someone has taken a domain in bad faith, he can either sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), or he can follow the arbitration procedures set out by the Internet Corporation of Assigned Names and Numbers (ICANN). The ACPA in the USA defines cybersquatting as registering, trafficking in, or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else. Hong Kong does not have an equivalent legislation. Trade mark owners may however resort to the general laws of trade mark infringement and sue the cybersquatter in Court.

The ICANN arbitration procedure is often regarded by intellectual property lawyers to be faster and less expensive, and the procedure does not necessarily require a solicitor to be engaged.

Past statistics show that Courts and arbitrators generally side with trademark owners in these disputes and order the cybersquatter to "transfer" the trademarked domain names to tthe trademark owners. Respondents defending in good faith may rely on the Applicant's "bad faith" or "reverse hijacking" to resist the Applicant's attempt to "bully" the Respondent.