Domain name registration is also protected by law. Be careful not to infringe on others' trademark rights.

The online news reports related to "paperpass.org" submitted by Z Company, as well as the recommendation posts on www.paperpass.org on websites such as Renren, Mop.com, Baidu Knows, Sina Blog, Jinshacan Xuemeng, and Japanese Home, the National Library's document reproduction certificate, and the query of the number of visits to paperpass in 2011 on the data expert website, can prove that "paperpass.org" had been put into use and had a certain degree of popularity before the application date of the disputed trademark.

Case Review

I believe that many students have heard of the "famous" paperpass paper detection system in the plagiarism detection industry! There are recommendation posts about paperpass on many platforms such as Renren, Baidu Knows, and Sina Blog. The system has "captured" the hearts of many graduates with its accuracy, strictness, and high cost-effectiveness.

Paperpass, the Chinese name for thesis pass, hears such a beautiful meaning, do you want to kneel down to the founder of the system? However, Z Company, as the actual user and manager of the two domain names "paperpass.org" and "paperpass.com", did not have time to register trademarks for the two domain names, but was preempted by L Company, which applied for registration of the "PaperPass" trademark in Class 41 (including "organizing cultural or educational exhibitions; training; educational assessment; educational information" and other services).

Z Company was dissatisfied and filed a declaration of invalidation for the trademark, claiming that L Company's behavior damaged its prior domain name rights.

The court found that:

The international domain name registration certificate can prove that Z Company is the current registered owner of "paperpass.org".

The online news reports related to "paperpass.org" submitted by Z Company, as well as the recommendation posts on www.paperpass.org on websites such as Renren, Mop, Baidu Knows, Sina Blog, Jinshacan Xuemeng, and Japanese Home, the National Library's document reproduction certificate, and the data expert website's query of the number of visits to paperpass in 2011, etc., can prove that "paperpass.org" had been put into use and had a certain degree of popularity before the application date of the disputed trademark.

In addition, the disputed trademark "PaperPass" is very similar to the prior domain name "paperpass.org" of Company Z in terms of constituent elements, pronunciation, appearance, etc.

The service approved for use by the disputed trademark is closely related to the "paper detection query system" service that Company Z engages in and enjoys a certain degree of popularity with its prior domain name in terms of service objects and service methods.

Therefore, if the disputed trademark is approved for registration, it is easy to cause the relevant public to mistakenly believe that the source of the services provided by Company L has a specific connection with Company Z. The disputed trademark infringes on the prior domain name rights of the plaintiff Company Z, so the disputed trademark is declared invalid.

Is the domain name protected by the Trademark Law?

Article 32 of the Trademark Law stipulates that the application for trademark registration shall not infringe on the existing prior rights of others.

Prior rights need to be understood in a broad sense, that is, other statutory rights and protectable interests other than trademark rights can be included in the scope of protection of prior rights in this article.

Other statutory rights, such as the right to name, portrait, and copyright stipulated in Article 2 of the Tort Liability Law, and rights and interests that are not clearly stipulated in the law but need to be protected, such as the names of approved drugs, packaging and decoration of well-known products, etc. The domain name involved in this case is the name and address of Internet users on the Internet. It is not only a hierarchical character identifier for identifying and locating computers on the Internet, but also a sign for registrants and users to show themselves on the Internet, and has the nature of identifying intellectual property rights.

Therefore, although the domain name is not a statutory right, it should also belong to the legitimate rights and interests protected by Article 32 of the Trademark Law.

Common forms of infringement of prior domain name rights in trademark cases

A common form of infringement of prior domain name rights is to register a domain name or the main part of a domain name that others have prior rights to as a trademark.

When the prior domain name can be associated with a specific source of goods or services after use, the application for registration and use of the subsequent trademark on the same or similar goods or services is likely to cause confusion and misunderstanding among the relevant public. Therefore, the situation in our case where "trademark" and "domain name" are not clearly distinguished appeared.

Key points for identifying prior domain names in trademark authorization and confirmation cases

First, the identification of the ownership of rights and the time of obtaining rights. In addition to the international domain name registration certificate, the third party in this case also submitted notarized screenshots of accounts on domain name service platforms such as Xinwang Domain Name Service Platform and Tencent Cloud Control Backstage. The control backstage shows that the domain name involved in this case is managed in the management account backstage of the third party. These two pieces of evidence can corroborate with the international domain name registration certificate to prove the ownership of the domain name.

At the same time, the international domain name registration certificate directly shows the registration date of the domain name, which is earlier than the application date of the disputed trademark, and the registration time displayed by the domain name service platform is the same as that of the international domain name registration certificate, and the resolution status is enabled, which can form a corresponding relationship to corroborate each other.

Secondly, the judgment on the similarity between the prior domain name and the disputed trademark. In this case, the disputed trademark is exactly the same as the third party's prior domain name except for the suffix, and .org is a common suffix for URLs. When promoting and using the prior domain name, the third party often removes the suffix and directly uses "paperpass". The disputed trademark and the third party's prior domain name are exactly the same in terms of text composition, which constitutes similarity.

Again, regarding the popularity of the prior domain name. The third party submitted the VIP recharge consumption contract and invoice for the institutional version of Paperpass, the paper assistant resource cooperation contract, the Baidu Index Paperpass query results, and the recommendations and reports on the third party's website on the Internet, all of which can prove that the third party's prior domain name had a certain popularity in the paper detection service before the application date of the disputed trademark, and the relevant public can associate the domain name with the third party.

Finally, for the judgment of similar goods and services. The scope of the prior domain name should be limited to the scope of its prior use and popularity. In this case, the third party's domain name is used in the field of online paper detection services. The services approved for use by the disputed trademark are all related to online training and education, and belong to the same field as the third party's domain name. In the case where the third party's domain name has been used first and has a certain popularity and has a corresponding relationship with the third party, the plaintiff's application for registration of the disputed trademark is likely to make the relevant public believe that the disputed trademark has a certain connection with the third party, or that the service is provided by the third party, thereby damaging the rights and interests of the third party.