Case Type: Domain name infringement dispute
Decision No.: Beijing Intellectual Property Court  No. 9 Civil Judgment
Lung Tin Representation: MACY’S West Stores, Inc.
Procedural History: Plaintiff, MACY’S West Stores, Inc. ("Macy's"), is one of the most famous department store in the United States with more than 150 years’ history. "MACY'S, " as a trademark and trade name, has been known by consumers, and in China, Macy’s has registered "MACY'S" trademark or marks containing "MACY'S" in many different classes. Defendant Beijing Network Information Co., Ltd. ("Beijing Network") registered the domain names "macys.com.cn" and "macys.cn" (collectively "disputed domain names") in 1999 and 2003, respectively. Macy's brought trademark infringement and unfair competition claims against Beijing Network before Beijing Intellectual Property Court.
Issues: Whether the defendant's registration of disputed domain names constitutes a trademark infringement or unfair competition.
Rulings: The Court ruled Beijing Network's behaviors constituted unfair competition and violated Provision 2 of Anti-Unfair Competition Law. Specifically, the Court (i) acknowledged Macy's legitimate prior legal rights on trademark, trade name and domain name (Macy's and its affiliated company jointly operated the domain name "macys.com"), all of which have been acquired prior to the registration of the disputed domain names; (ii) held that the disputed domain names are confusingly similar or identical to Macy's trademarks, trade name and domain name, and therefore would cause consumers' confusion as to the real registrant, in consideration of Macy's high reputation worldwide and possible knowledge by Beijing Network; and (iii) opined that Beijing Network's behaviors lack proper intention and its bad faith should be presumed given the fact that Beijing Network has no cogent reason to register the disputed domain names, especially in the case of Macy's high reputation.
Significance: The defendant’s activities of registering a prior plaintiff's trademark with a certain reputation as domain names, and of leaving the domain names unused constitute unfair competition.
This case has been selected as one of Beijing Intellectual Property Court’s typical cases of 2016.
In accordance with Article 1 (3) of Interpretation by the Supreme People's Court of Several Issues Relating to Application of Law to Trial of Cases of Civil Disputes over Trademarks: "Article 1 Following acts are acts under Article 52 (5) of the Trademark Law that cause, in other respects, prejudice to the exclusive right of others to use registered trademarks:(3), Registering lexical items identical with or similar to another person's registered trademark as a domain name, and conduct via the domain name, e-commerce in the trade of relevant goods, which is easy to cause confusion on the part of the relevant public", in this case, the defendant ("Beijing Network") actually have not used the disputed domain name since registration, the Court accordingly opined that the defendant’s behavior did not infringe Macy's exclusive right of trademark "MACY' S".
Meanwhile, the court opined that recognition part of the disputed domain name is confusingly similar to the trademark and trade name of Macy's, which results in that relevant publics in China misidentify the real register of the deputed domain name, thereby being harm to the fair competition market environment. Therefore, the defendant's registration of the disputed domain name violates the provisions of Article 2 (2) of the Anti-Unfair Competition Law of the People's Republic of China. Accordingly, the court held that Beijing Network should transfer the deputed domain name due to infringement of unfair competition to Macy's, and also support reasonable fee of 40, 000 RMB for the plaintiff.
Lawyer reviews from Ms. Yunxiao ZANG:
It is concluded that the defendant did have malicious registering behavior. Lunt Tin team put lots efforts in communication, data search, translation and certification etc. Besides, we also made a large amount of investigation which greatly supported the litigation. In this case, our lawyer team provided objective and comprehensive documents almost one thousand pages for the court. In the final judgment, the court adopted our overwhelming majority of statements, which is undoubtedly the most powerful affirmation and encouragement for our work.