Q: What is the legal significance of the "first-come-first served" registration policy of the domain name registrar such as Network Solutions Inc and Hong Kong Domain Name Registration Limited?
A: In the English authority where pitman.co.uk was the subject of dispute, the "first-come-first-served" registration policy is challenged by Pitman Training Limited. The registrar of .co.uk Nominet NK was sued. The Court ruled that Nominet NK was entitled to allocate domain names based on the "first-come-first-served" policy.
Q: What legal risk relates to the use of domain names?
A: There is a legal risk on using a domain name associated with a famous brand, trade mark or business. Disney and Rolex are examples. A person who adopts a domain name the same as or with likeness to famous brands will highly likely attract litigation on passing-off and trade mark infringement.
Q: Are there any cases being litigated on use of famous brand as domain names?
A: There are a lot of cases on that in America but not too many in England. There is so far none in Hong Kong. In England, Harrods.com, marksandspcxencer.com have been a subject of dispute. In both cases, Harrods and Marks & Spencer managed to "get back" their domain names. The relevant aspects of laws adopted by the Court are trade mark and passing off. As these are common law cases, the decided legal principles are of great use to Hong Kong when advising rights on domain name legally.7
Q: Am I liable of trade mark infringement or passing off if I have adopted the use of domain name associated with a famous mark which I am not aware of its existence?
A: You would still be liable. You are therefore advised to make searches in respect of the trade mark registry before you decide to adopt the domain name. Some marks could have attracted litigation to your surprise. For example, a information company in Washington DC registered the domain name dc.com. Warner Brothers owns the registered trade mark DC COMICS and sued the information company with the objective of "getting back" the domain name..
Besides, Genesis Access Point obtained the domain name thegap.com. The garment shop The Gap Inc. who also owns the registered trade mark of GAP, sued Genesis for trade mark infringement,.
Q: How is my position if I am only a domain name collector of famous brands and I do not use the domain names to a build a homepage.
A: That is legally risky. In the English case of One in a Million, a long history and volumnous act of domain name collection is sufficient to constitute a threat of infringement. In that case, the defendant was ordered by the Court to assign a number of domain names to the Plaintiffs. The domain names included bt.org, marksandspencer.com, labrokes.com.
Q: Should I commence legal action in the Court or complain to the accredited arbitration service provider in a dispute relating to a .hk domain name?
A: It depends what remedies you intent to seek. Judge by the experience in .com disputes, complainants inclined to use ICANN's Uniform Dispute Resolution Policy much more often than using the Court as a venue. The arbitration venue is believed to be of less cost and more speedy. But the Arbitration Panel has no power to order any damages against the registrant.