DNDR Guide 2nd Ed

2nd Edition
Guide to HKIAC
Domain Name
Dispute Resolution
1
Guide to HKIAC
Domain Name Dispute Resolution
(2nd Edition 2022)
Content
i.… Abbreviations................................................................................................. 4
ii.… Glossary of terms........................................................................................... 6
1. …Introduction to Domain Name Dispute Resolution..................................9
2. …Domain Name Dispute Resolution Services at HKIAC...........................10

2.1 Administrative Proceedings under UDRP............................................ 10
2.2 Administrative Proceedings under CNDRP......................................... 14
2.3 Administrative Proceedings under HKDRP......................................... 17
2.4 Other Domain Name Dispute Resolution Services provided by HKIAC....20
2.5 HKIAC Domain Name Dispute Resolution Panel................................ 24
2.6 ADNDRC Administrative Panel........................................................... 25
2.7 HKIAC Case Statistics ......................................................................... 25
3.… Selected Procedural Issues....................................................................29

3.1 Re-filing a Complaint........................................................................... 29
3.2 Time Bars............................................................................................. 31
3.3 Identity of the Respondent.................................................................. 32
3.4 Consolidation of Claims...................................................................... 33
3.4.1 Multiple Registrants................................................................ 34
3.4.2 Multiple Related Domain Names............................................ 34
3.5 Panelist Conflicts of Interest................................................................ 35
3.6 No Response....................................................................................... 36
1
3.7 Delayed Responses............................................................................. 37
3.8 Settlement or Suspension of Proceedings.......................................... 37
3.9 Consent to Transfer or Cancel Domain Name..................................... 38
3.10 Language of Proceedings.................................................................... 38
3.11 Procedural Orders............................................................................... 40
3.12 Appealing the Decision ...................................................................... 41
3.13 Expiry of Domain Name...................................................................... 41
4. …Selected Legal Issues.............................................................................43

4.1 First Element: Domain name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights......... 43
4.1.1 The Test for Identical or Confusingly Similar............................. 43
4.1.1 (a) Chinese Characters.................................................... 43
4.1.1 (b) Chinese Pinyin............................................................ 44
4.1.1 (c) Pinyin Abbreviation.................................................... 45
4.1.1 (d) Domain Name Contains More than the Full Trademark..46
4.1.1 (d)(i) Domain Names Contain a Geographical Identifier....46
4.1.1 (d)(ii) Trademark Followed by Suggestive Terms............. 47
4.1.1 (d)(iii) Trademark Followed by Words Without Substantial
Meaning................................................................. 47
4.1.1 (d)(iv) Domain Name Contains Two or More Trademarks....48
4.1.1 (e) Typosquatting............................................................. 48
4.1.2 Demonstrating Complainant’s rights in trademark or service
mark.......................................................................................... 49
4.1.2 (a) Complainant’s Civil Rights or Interests....................... 49
4.1.2 (b) Unregistered Trademarks/Trade Names..................... 51
4.2 Second Element: Respondent has No Rights or Legitimate Interests in
Respect of the Domain Name............................................................. 52
4.2.1 Independently Acquired Trademark......................................... 52
4.2.2 Previous Business Relationships................................................ 54
2
4.3 Third Element: Domain Name Has Been Registered and Is Being Used in
Bad Faith............................................................................................. 55
4.3.1 Renewal, Re-registration and Transfer....................................... 57
4.3.2 Complainant’s Reputation......................................................... 57
4.3.3 Website Content Probative of Knowledge............................... 58
4.3.4 Passive Holding (Lacking in Active Use).................................... 58
4.3.5 Fraudulent Transfers.................................................................. 59
4.3.6 Concealment of Ownership ..................................................... 59
4.3.7 High–Volume Registrants.......................................................... 60
4.3.8 Disrupting Business of Competitors.......................................... 61
4.4 Other Legal Issues .............................................................................. 61
4.4.1 The Effect of National Law........................................................ 61
4.4.2 Cancellation ordered instead of transfer................................... 62
4.4.3 Burden of Proof......................................................................... 63
Annexes......................................................................................................64
1.… HKIAC Fee Schedules: UDRP, CNDRP, HKDRP............................................ 64
2.… Procedural Flowcharts – Key DNDR Proceedings at HKIAC: UDRP, CNDRP,
… HKDRP......................................................................................................... 66
Acknowledgements ...................................................................................72
Disclaimer:
The contents of this publication, current at the date of the publication set out in
this document, are for reference purposes only. They do not constitute legal advice
and should not be relied upon as such. Specific legal advice about your specific
circumstances should always be sought separately before taking any action based
on this publication.
3
Abbreviations
ACDR Arab Center for Dispute Resolution
ADNDRC Asian Domain Name Dispute Resolution Centre
AIAC Asian International Arbitration Centre
CAC Czech Arbitration Court Arbitration Centre for Internet Disputes
ccTLDs Country-code Top-level Domain Names
CEDRP Charter Eligibility Dispute Resolution Policies
CIETAC China International Economic and Trade Arbitration Commission
CNDRP CNNIC Domain Name Dispute Resolution Policy
CNNIC China Internet Network Information Center
DNDR Domain Name Dispute Resolution
DNS Domain Name System
EDDP Expired Domain Deletion Policy
GDPR General Data Protection Regulation
gTLDs Generic Top-level Domain Names
HKAO Hong Kong Arbitration Ordinance
HKDRP Hong Kong Domain Name Dispute Resolution Policy
HKIAC Hong Kong International Arbitration Centre
HKIRC Hong Kong Internet Registration Corporation
ICANN Internet Corporation for Assigned Names and Numbers
4
IDRC Internet address Dispute Resolution Committee
OP3FT Organization for the Promotion, Protection and Progress of

Frogans Technology
PHDRP dotPH Uniform Dispute Resolution Policy
PRC People’s Republic of China
SDRP Sunrise Dispute Resolution Policies
TDRP Transfer Dispute Resolution Policy
TM-PDDRP Trademark Post-Delegation Dispute Resolution Procedure
TLD Top-level Domain
UDRP Uniform Domain Name Dispute Resolution Policy
UDRP-F Uniform Dispute Resolution Policy for Frogans Addresses
URS Uniform Rapid Suspension System
WIPO World Intellectual Property Organisation
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Glossary of Terms
A
• ADNDRC Administrative Panel - a panel of individuals qualified to serve as
domain name dispute resolution panelists maintained by ADNDRC.
• Arbitration Panel - the panel appointed to decide a dispute under the
HKDRP.
C
• Cancellation - cancelling a domain name means that it will be deleted from
the register. It will not work as part of a website or email address and may be
released for re-registration on a first-come first-serve basis.
• Complaint - an application filed by a third party with a domain name dispute
resolution service provider against a domain name owner seeking remedies
under a domain name policy.
• Complainant - a person or an entity who files a complaint with a domain
name dispute resolution service provider.
• Compliance Review - a review of the complaint conducted by the dispute
resolution service provider to ensure compliance with the relevant DNDR
policy, rules and supplemental rules.
• Country Code Top-Level Domain (“ccTLD”) - two-letter domain names that
are associated with a specific country such as .cn for mainland China or .ph
for the Philippines.
• Cybersquatting - the process of registering a domain with the intent of
preventing another entity from registering and using the domain name; to
redirect traffic from a legitimate website; or to sell the domain to another
party at an inflated price.
D
• Decision - the findings of a panelist appointed by a dispute resolution service
provider in a domain name dispute.
• Dispute Resolution Panel - the administrative panel appointed to decide a
dispute under the TDRP.
• Domain Name - a unique address on the Internet for accessing a particular
website.
• Domain Name System - a naming database in which internet domain names
are located and translated into internet protocol addresses.
6
E
• Expert Panel - a one-person or three-person panel appointed by a dispute
resolution service provider in TM-PDDRP proceedings.
• Expiry Date - the date on which a domain name registration will expire.
G
• Generic top-level domain (“gTLD”) - an internet domain name extension
with three or more characters. It is one of the categories of the top-level
domain (“TLD”) in the DNS maintained by the Internet Assigned Numbers
Authority, e.g., .biz, .com, .info, .org.
H
• HKIAC Appointments Committee - the body responsible for reviewing and
admitting individuals to the HKIAC DNDR Panel.
• HKIAC DNDR Panel - a panel of individuals qualified to serve as domain
name dispute resolution panelists maintained by HKIAC.
I
• Internet Assigned Numbers Authority - a standards organisation that
oversees global IP address allocation, autonomous system number allocation,
root zone management in the domain name system, media types, and other
internet protocol-related symbols and internet numbers.
L
• Lock (a domain name) - the act of locking a disputed domain name by
the registrar once a complaint has been reported by the dispute resolution
service provider to the registrar. The domain name will remain locked during
the domain name proceedings.
M
• Manager of ccTLD - an organisation supervising the process of registration
of domain names in the registry for the ccTLD, and supervising the operation
of the domain name servers and the maintenance of the appropriate zone
files for the ccTLD.
P
• Panel - a panel of one or three individuals appointed by a dispute resolution
service provider or the parties to decide a domain name dispute.
• Party - a legal person who is involved in domain name proceedings as a
complainant or a respondent.
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R
• Register (a domain name) - the act of an individual or a company purchasing
a domain name pursuant to a registration agreement with a registrar and
obtaining ownership of it.
• Registrant - the owner of a domain name who has entered into a registration
agreement with a registrar to register a domain name and obtain ownership
over it.
• Registrar - an organisation which provides domain name registration services
to the public.
• Registration agreement - the agreement entered into between a registrar
and a registrant upon the registration or acquisition of a domain name.
• Registry operator - the entity responsible for operating the top-level domain
in which a disputed domain name is registered.
• Renewal - the process of re-registering a domain name to continue the
ownership of the domain.
• Respondent - a person or an entity responding to a formal complaint filed by
a complainant about its domain name registration.
S
• Second-level domain - a domain name which is located below a top-level
name (e.g., .com.hk, with the .com being the second-level to the .hk domain
name).
• Sunrise Period - a period during which trademark holders may preregister
names that are the same or similar to their trademarks in order to avoid
cybersquatting.
T
• Threshold Review Panel - a panel established under the TM-PDDRP to
review a complaint to determine whether the complaint satisfies certain
criteria set out in the TM-PDDRP.
• Top-level domain (“TLD”) - the last segment of a domain name (e.g., .com;
.cn; or .hk).
• Transfer - the act of changing the ownership of a domain name by
transferring the ownership of it from one legal person to another. This is
usually undertaken by the relevant registrar. It is one of the most common
remedies available under domain name dispute resolution policies.
W
• WHOIS - a searchable database providing information on owners of
registered domain names.
• WIPO Final Report - Final Report of the WIPO Internet Domain Name
Process published on 30 April 1999.
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1. Introduction to Domain Name Dispute Resolution
1. Domain name dispute resolution (“DNDR”) is a dispute resolution method
available to resolve disputes brought or commenced by a third party
(“Complainant”) alleging a wrongful registration of a domain name against
a domain name owner (“Respondent”). The process is available by virtue
of various DNDR policies adopted by registrars in registration agreements
with the domain name owner (also known as the registrant).
2. The registration agreements typically provide that a Complainant may
seek remedies under a DNDR policy in respect of a domain name. The
Complainant may commence proceedings under the relevant policy before
a DNDR service provider that provides services under that policy according
to procedural rules it has promulgated. The DNDR service provider typically
appoints a sole panelist1 who considers the positions of the Complainant
and the Respondent to determine the outcome of the dispute.
3. The relevant policy also sets out the grounds a Complainant must satisfy
to obtain a remedy. These are typically that (i) the domain name registered
by the Respondent is identical or similar to the Complainant’s trademark or
service mark in which the Complainant has rights; (ii) the Respondent has
no rights or legitimate interest in respect of the domain name; and (iii) the
domain name has been registered and is being used in bad faith.
4. The remedies that a Complainant may seek under most policies are (i)
the transfer of the disputed domain name from the Respondent to the
Complainant; or (ii) cancellation of the disputed domain name. In the case
of a successful complaint, the panelist will issue a decision which will be
implemented by the relevant registrar.
5. DNDR is conducted online. The proceedings are not influenced by the
location of the registrar, the Respondent, the Complainant, or the DNDR
service provider. The process is relatively cost-effective, flexible, and swift
and often results in an effective remedy for Complainants. The outcome of
the process is, however, not final in the sense that rightful ownership over
the domain name may still be litigated in court proceedings after a panelist
has issued his or her decision.
6. The Hong Kong International Arbitration Centre (“HKIAC”) is a DNDR
service provider. It provides services under a range of DNDR policies, as
set out below.
1 For more on the appointment of a sole panelist of a three-member panel see infra at section 2.1.3.
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2. Domain Name Dispute Resolution Services at
HKIAC
7. HKIAC provides DNDR services concerning generic top-level domains
(“gTLDs”), new gTLDs and certain country-code top-level domains
(“ccTLDs”) under the following policies and procedures: (i) Uniform Domain
Name Dispute Resolution Policy (“UDRP”); (ii) Uniform Rapid Suspension
System (“URS”); (iii) Trademark Post-Delegation Dispute Resolution
Procedure (“TM-PDDRP”); (iv) Transfer Dispute Resolution Policy (“TDRP”);
(v) Sunrise Dispute Resolution Policies (“SDRP”); (vi) Charter Eligibility
Dispute Resolution Policies (“CEDRP”); and (vii) Uniform Dispute Resolution
Policy for Frogans Addresses (“UDRP-F”).
8. HKIAC provides its services under these policies and procedures in its
capacity as the Hong Kong office of the Asian Domain Name Dispute
Resolution Centre (“ADNDRC”). ADNDRC is the first and only UDRP
provider in Asia accredited by the Internet Corporation for Assigned Names
and Numbers (“ICANN”).
9. The ADNDRC is a charitable institution limited by guarantee and registered
in Hong Kong. It was jointly established by HKIAC and the China International
Economic and Trade Arbitration Commission (“CIETAC”) in 2001. Today,
ADNDRC has four offices in the following cities: (i) Beijing (operated by
CIETAC); (ii) Hong Kong (operated by HKIAC); (iii) Kuala Lumpur (operated
by the Asian International Arbitration Centre (“AIAC”)); and (iv) Seoul
(operated by the Internet address Dispute Resolution Committee (“IDRC”)).
HKIAC resumed service as the Secretariat of ADNDRC in March 2021.
10. In addition, HKIAC serves as a DNDR service provider in its own capacity for
ccTLDs under the following policies: (i) Hong Kong Domain Name Dispute
Resolution Policy for .hk and .香港 (“HKDRP”); (ii) China ccTLD Dispute
Resolution Policy for “.cn” and “.中国” (“CNDRP”); and (iii) dotPH Uniform
Domain Name Dispute Resolution Policy for “.ph” (“PHDRP”).
11. Each of the policies above will be discussed in turn. As HKIAC most
commonly administers proceedings under UDRP, CNDRP and HKDRP, a
detailed overview of the administrative procedures adopted by HKIAC
under those policies will be provided below.
2.1 Administrative Proceedings under UDRP

12. ICANN approved the implementation of the UDRP on 24 October 1999.
It sets forth the terms and conditions for a dispute between a domain
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name registrant and a third party (other than the registrar) in relation to
the registration and use of a domain name. The UDRP has been adopted
by all ICANN-accredited registrars. It has been included in the registration
agreements for a number of gTLDs, all new gTLDs, and certain ccTLDs2 that
have adopted the UDRP.
13. As an ICANN-accredited UDRP provider, ADNDRC accepts domain name
complaints arising out of the UDRP. A Complainant may file its domain
name complaint with any of the four offices of the ADNDRC. A complaint
filed with the Hong Kong office of the ADNDRC will be administered by
HKIAC pursuant to the UDRP, the Rules for UDRP (“UDRP Rules”),3 and
the ADNDRC Supplemental Rules for UDRP and UDRP Rules (“ADNDRC
Supplemental Rules”).4
14. HKIAC has significant experience handling domain names disputes under
the UDRP. Since 2002, HKIAC has administered over 1,400 UDRP cases.5
Each year, the majority of domain name disputes filed at HKIAC are
administered under the UDRP (almost 70% in 2021).
15. To succeed under the UDRP, a Complainant must show that: (i) the disputed
domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights; (ii) the Respondent has no rights
or legitimate interests in respect of the domain name; and (iii) the domain
name has been registered and is being used in bad faith.
2.1.1 Filing a complaint
16. Any company or person that wishes to protect their rights in relation to
a gTLD, new gTLD or certain ccTLDs can file a complaint to dispute the
ownership of the domain name. Commonly, this will be the owner or
licensee of a registered trademark although it does not have to be. The
complaint is filed against the domain name registrant.
17. The complaint should be submitted electronically using the together with
the corresponding case filing fee. Upon receipt of a complaint, HKIAC will
request that the registrar lock the domain name to ensure the status of the
domain name does not change during the proceedings and also confirm
the Respondent’s contact information with the registrar.
2 ccTLDs that have adopted the UDRP: .ag, .ai, .as, .bm, .bs, .bz, .cc, .cd, .co, .cy, .dj, .ec, .fj, .fm, .gd, .gt, .ki, .la, .lc,
.md, .me, .mw, .nr, .nu, .pa, .pk, .pn, .pr, .pw, .ro, .sa, .sc, .sl, .so, .tj, .tt, .tv, .ug, .ve, .vg, and .ws.
3 UDRP Rules were approved by the ICANN Board of Directors on 28 September 2013.
4 The current version of the ADNDRC Supplemental Rules are effective from 31 July 2015.
5 As of 31 December 2021.
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18. The HKIAC will conduct a compliance review of the complaint following
receipt of the requested information from the registrar. Any deficiencies
shall be notified to the complainant, and if the deficiencies are not remedied
within five calendar days, the complaint will be deemed withdrawn without
prejudice to a different complaint being filed later.
19. After the Complainant has rectified any deficiencies, HKIAC will notify the
parties of the complaint and ask the Respondent to complete the response
form setting out the Respondent’s confirmation or denial of all or part of
the complaint; the factual and legal grounds on which the Complaint is
unfounded; the remedies sought; the selection of a one or three member
panel; and any other relevant details.
2.1.2 Filing a response
20. The Respondent will have 20 calendar days to file the response after
which HKIAC will proceed to appoint the panel. If the Respondent has
not submitted a response within the required time, HKIAC will inform the
parties that the Respondent is in default and proceed with appointing the
panel.
2.1.3 Appointing the panel
21. Under UDRP proceedings, parties can select a single-member panel or a

three-member panel to render a decision for the domain name dispute.
The Complainant will have the first opportunity to select the number of
panelists by indicating the number in the complaint. In the event that a
single-member panel is selected by the Complainant, the Respondent
may still select a three-member panel by indicating its preference in the
response form.
22. If a single-member panel is to be appointed, the Complainant will bear
the cost for the domain name proceedings.6 However, where the dispute
is decided by a three-member panel at the Respondent’s choice, the
Respondent will pay half of the fees for a three-member panel.7 The fees
for UDRP proceedings at ADNDRC can be found at Annex 1: UDRP Fee
Schedule.
23. If a single-member panel is to be appointed, the HKIAC shall within five
calendar days after receipt of the response or the lapse of the period for
submitting the response, appoint a panelist from the panel of individuals
6 Paragraph 6(b) UDRP Rules.

7 Paragraph 6(c) UDRP Rules.
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maintained by ADNDRC to serve as domain name dispute resolution
panelists (“ADNDRC Administrative Panel”).8
24. If a three-member panel is to be appointed, each party will be invited
to propose three candidates to act as a co-panelist.9 The candidates for
co-panelists can be drawn from any ICANN-approved UDRP provider’s
list of panelists. HKIAC will appoint one co-panelist from the list of
candidates provided by each party. If either party is unable to provide a
list of candidates, HKIAC will appoint from the ADNDRC Administrative
Panel. The presiding panelist will be appointed by HKIAC through a listing
mechanism. Five candidates will be provided to the parties by HKIAC. The
parties will be asked to rank the candidates in order of preference. HKIAC
will appoint the presiding panelist that reasonably balances the preferences
of both parties.10 Before appointing a panelist, HKIAC will consider the
following factors:11
i. the independence and impartiality of the panelist;
ii. the availability of the panelist;
iii. any language requirements;
iv. the identity of the parties;
v. any stipulation in the relevant registration agreement; and
vi. any suggestions made by the parties.
2.1.4 Issuing and implementing the decision
25. The panel in a UDRP proceeding is required to render a decision within

14 calendar days from the date of appointment where no exceptional
circumstances exist.12 The panel will decide the dispute in accordance with
the UDRP and the UDRP Rules by examining the case merits in connection
with the three elements listed in paragraph 4(a) of the UDRP. In the event
that the panel finds a complaint justified, it may order that the disputed
domain name to be transferred from the registrant to the Complainant
or that the domain name be cancelled. If a complaint is found to be
unjustified, the complaint will be rejected and the Respondent will retain
the disputed domain name. In the case of a three-member panel, the

9 Paragraph 6(d) UDRP Rules.
10 Paragraph 6(e) UDRP Rules
11 Article 8.1 ADNDRC Supplemental Rules.
13
panel’s decision shall be made by a majority and any dissenting opinion
shall accompany the decision.13
26. Upon receipt of the decision, the HKIAC will review the decision and liaise
with the panel in relation any typographical or clerical errors or errors in
form. Within three calendar days after receipt of the decision from the panel,
HKIAC will notify the parties and the registrar of the decision and publish the
decision on the ADNDRC and HKIAC websites.14
27. The registrar will then communicate the date for implementation of the
decision to the parties.15 If the panel decides that the domain name is to
be cancelled or transferred, the registrar will wait ten business days before
implementing the decision. If, within the ten-day period, the Respondent
provides supporting documents confirming that it has commenced a
lawsuit against the Complainant in a competent court, the registrar will not
implement the decision.16
28. For more information regarding the UDRP procedure, please refer to Annex
2: Flowchart for UDRP Proceedings.
2.2 Administrative Proceedings under CNDRP

29. The China Internet Network Information Center (“CNNIC”) first approved
the China ccTLD Dispute Resolution Policy (“CNDRP”), CNDRP Rules and
the HKIAC Supplemental Rules to the CNDRP (“CNDRP Supplemental
Rules”) on 30 September 2002. The CNDRP, CNDRP Rules and CNDRP
Supplemental Rules govern disputes relating to .cn and .中国. The current
version of the CNDRP and CNDRP Rules became effective on 18 June 2019.
The current version of the CNDRP Supplemental Rules became effective on
9 August 2019.
30. Disputes handled by HKIAC under the CNDRP represent the second highest
number of cases by policy. Since HKIAC began providing services under the
CNDRP in 2002, HKIAC has administered a total of 1025 CNDRP cases.17
31. To succeed under the CNDRP, a Complainant must show that: (i) the disputed
domain name is identical or confusingly similar to the Complainant’s name
or mark in which the Complainant has civil rights or interests; (ii) the disputed
domain name holder has no right or legitimate interest in respect of the
13 Paragraph 15(c) & (e) UDRP Rules.

14 Paragraph 16(a) & (b) UDRP Rules.
15 Paragraph 16(a) UDRP Rules.
16 Paragraph 4(k) UDRP.
17 As of 31 December 2021.
14
domain name or major part of the domain name; and (iii) the Respondent
has registered or has been using the domain name in bad faith.
32. Similar to the procedures for filing a UDRP complaint, complaints under
the CNDRP are to be submitted electronically using the complaint form
specific to the CNDRP together with the case filing fee.18 Upon receipt
of a complaint, HKIAC will request the registrar to lock the domain name
and confirm the registration details of the domain name and the contact
details of the Respondent. HKIAC will then conduct a compliance review
and notify the Complainant if there are any deficiencies in the complaint
that need to be rectified. The Complainant must rectify the deficiencies
within five calendar days, or else the complaint will be deemed withdrawn
without prejudice to the submission of a subsequent complaint by the
Complainant.
33. As with UDRP proceedings, under the CNDRP Respondents are given
a period of 20 calendar days to submit a response. The response form
specific to the CNDRP must be used to file the response.
34. The panel appointment mechanism under the CNDRP is similar to that of
the UDRP with respect to the selection of either one or three panelists, the
appointment of a sole panelist and the allocation of fees payable by the
parties.19 However, HKIAC will appoint panelists from a panel of individuals
qualified to serve as domain name dispute resolution panelists maintained
by HKIAC (“HKIAC DNDR Panel”) instead of the ADNDRC Administrative
Panel.
35. If a three-member panel is to be appointed, each party will be invited to
propose to HKIAC three candidates to act as a co-panelist. HKIAC will
select a co-panelist from each party’s list and will appoint the presiding
panelist.20 Unlike the UDRP, there is no listing mechanism in the CNDRP
Rules for the appointment of the presiding panelist.
18 For further details of the filing fees please see Annex 1 CNDRP Fee Schedule.
19 See paragraphs 21 to 24.
20 Article 25 CNDRP Rules.
15
36. Issuing a decision under the CNDRP follows the same timelines as those
under the UDRP. The panel shall render a decision within 14 calendar days,
and the HKIAC shall within three calendar days of receipt of the decision
notify the parties, the registrar, and CNNIC of the decision as well as publish
the decision on the HKIAC website.
37. The registrar will implement the decision after ten calendar days (rather
than ten business days under the UDRP). Implementation will be suspended
if the Respondent indicates that it has filed a lawsuit in a competent court
in relation to the disputed domain name. The Respondent must provide
documents to the registrar to prove a lawsuit has been filed.
2.2.5 Additional distinguishing features
38. While the CNDRP has many similarities with the UDRP, there are certain
additional distinguishing features:
i. Application to names and marks - The UDRP covers trademarks or
service marks, whereas the CNDRP covers names or marks in which the
Complainant has a civil right or interest. Such civil rights include rights
associated with the trademark or service mark as well as rights covered
by other laws such as the Copyright Law of the People’s Republic of
China (“PRC”) and the PRC Anti-Unfair Competition Law. Therefore, the
threshold for initiating a complaint under the CNDRP is lower.
ii. Three-year time-bar - According to Article 2 of the CNDRP “the dispute
resolution service providers do not accept the complaint regarding
domain names with a registration term of over THREE years”.21 If a
domain name has been registered for more than three years, a CNNIC-
accredited DNDR service provider cannot accept the complaint. The
introduction of a limitation period does not preclude a trademark owner
or a licensee from challenging a CNNIC domain name registration
through other legal actions. For example, by commencing a civil suit in
the PRC People’s Courts.
iii. Language of the proceedings - The language of the proceedings
shall be Chinese unless otherwise agreed by the parties or determined
in exceptional cases by the panel.22 This differs from the UDRP Rules,
which provide that the language of the proceedings shall be that of
21 Article 2 CNDRP.
22 Article 8 CNDRP Rules.
16
the registration agreement, unless otherwise agreed by the parties
or determined otherwise by the panel or specified otherwise in the
registration agreement.23 For a more detailed discussion on the language
of the proceedings, please see section 3.12.
39. For more information regarding the CNDRP procedure, please refer to
Annex 2: Flowchart for CNDRP Proceedings.
2.3 Administrative Proceedings under HKDRP

40. The Hong Kong Internet Registration Corporation Limited (“HKIRC”)
(formerly the Hong Kong Domain Name Registration Company Limited)
first approved the Hong Kong Domain name Dispute Resolution Policy
(“HKDRP”), HKDRP Rules of Procedure (“HKDRP Rules”), and HKIAC
Supplemental Rules under the HKDRP (“HKDRP Supplemental Rules”) on
24 April 2001, effective from 1 June 2001. The HKDRP, HKDRP Rules and
HKDRP Supplemental Rules govern disputes arising out of .hk and .香港
domains. The current version of the HKDRP took effect from 22 February
2011. The current version of the HKDRP Rules and HKIAC Supplemental
Rules took effect from 15 July 2020.
41. HKIAC is the only service provider accredited to handle disputes arising out
of the HKDRP.
42. Since HKIAC began providing services under the HKDRP in 2001, HKIAC
has administered a total of 185 cases as of 31 December 2021.
43. To succeed under the HKDRP, the Complainant must show that: (i) the
Respondent’s domain name is identical or confusingly similar to a trademark
or service mark in Hong Kong in which the Complainant has rights; (ii) the
Respondent has no right or legitimate interests in respect of the domain
name; (iii) the Respondent’s domain name has been registered and is being
used in bad faith; and (iv) if the domain name is registered by an individual
person, the Respondent does not meet the registration requirements for
that individual category of domain name.
44. Similar to the procedures for filing a UDRP or CNDRP complaint, complaints
under the HKDRP are to be submitted electronically using the complaint
form specific to the HKDRP together with the case filing fee.24 However, the
23 Paragraph 11(a) UDRP Rules.

24 For further details of the filing fees please see Annex 1: HKDRP Administrative Fees.
17
Complainant must also provide a copy of the complaint to the HKIRC at the
same time as it submits its complaint to the HKIAC.25
45. Upon receipt of a complaint, HKIAC will request that the registrar lock the
domain name and confirm the registration details of the domain name
and the contact details of the Respondent. HKIAC will then conduct a
compliance review and notify the Complainant if there are any deficiencies
in the complaint that need to be rectified. However, the Complainant must
rectify the deficiencies within five business days instead of calendar days as
stipulated in the UDRP and CNDRP.
46. Unlike the UDRP and the CNDRP, Respondents are given a period of 15
business days to submit a response. The response form specific to the
HKDRP must be used to file the response.
47. The panel appointment mechanism under the HKDRP is similar to that of
the UDRP with respect to the selection of either one or three panelists,
the appointment of a sole panelist and the allocation of fees payable by
the parties.26 However, as with appointments under the CNDRP, HKIAC will
appoint panelists from the HKIAC DNDR Panel instead of the ADNDRC
Administrative Panel. The applicable time limits are five business days
rather than five calendar days.
48. If a single-member panel is to be appointed, the HKIAC shall within five
business days, after receipt of the response or the lapse of the period for
submitting the response appoint a panelist.27
49. If a three-member panel is to be appointed, each party will be invited
to put forward three candidates to act as a co-panelist. The candidates
for co-panelists must be drawn from the HKIAC DNDR Panel. HKIAC will
make the appointments within five business days from the lists provided.
The presiding panelist will be appointed by HKIAC through a listing
mechanism. Five candidates will be provided to the parties. The parties
will be asked to rank the candidates in order of preference. The candidate
who is mutually ranked the highest by the parties will be appointed as the
presiding panelist. Where there is a tie, HKIAC will appoint the candidate
25 Article 5(2) HKDRP Supplemental Rules.

26 See paragraphs 21 to 24.
27 Paragraph 6(b) HKDRP Rules.
18
that reasonably balances the preferences of both parties.28
50. The panel shall render a decision within 15 business days (not 14 calendar
days as stipulated in the UDRP and CNDRP). The HKIAC shall within three
business days of receipt of the decision notify the parties, the registrar,
and HKIRC of the decision as well as publish the decision on the HKIAC
website. The registrar will implement the decision after ten business days.
If a registrar does not implement the decision, without a reason acceptable
to the HKIRC, the HKIRC shall execute the decision.29
2.3.5 Additional distinguishing features
51. While some of the procedures under the HKDRP are similar to those of the
UDRP and CNDRP, certain additional distinguishing features of the HKDRP
are highlighted below.
52. Mandatory arbitration - Filing a complaint under the HKDRP is considered
as initiating a mandatory arbitration proceeding against the other party.30
Therefore, the proceeding is governed by the Hong Kong Arbitration
Ordinance (Cap. 609) (“HKAO”). As a result, a decision rendered under
the HKDRP is considered an arbitral award rendered in Hong Kong under
the HKAO (including for the purposes of enforcement under the 1958 New
York Convention). Importantly, this means that the decision is not subject
to appeal in court. This is an important difference to decisions made under
the UDRP and CNDRP as discussed above.
53. Domain names in pairs - According to Article 6 of the Domain Name
Registration Policies, Procedures and Guidelines of .hk and .香港 domain
names (“Registration Policies”) effective from 15 July 2020, the same
registrant can choose to bundle its “.hk” and “.香港” domain names if
the second-level domain name is the same. A case in point is the HKDRP
complaint filed with HKIAC in respect of <alipayhk.hk> and its bundled
domain name <支付寶香港.香港> (HKIAC Case No. DHK-1700150, 7
December 2017). A bundled domain name will be treated as one domain
name for the purposes of transfer and renewal. Therefore, although
paragraph 3(c) of the HKDRP Rules only allows the complaint to relate to
one domain name, where a domain name is held as a pair, it will be handled
in a single proceeding.
28 Paragraph 6(e) HKDRP Rules.

29 Paragraph 4(k) HKDRP.
30 Article 4 HKDRP.
19
54. Additional eligibility requirement for individual registrant - If the domain
name is registered by an individual person, the domain name registered
must be the registrant’s own individual name, which can be either their
legal name, or a name by which the registrant is commonly known.31
55. Language of the arbitration proceedings - The language of the arbitration
proceedings shall be in English for English language .hk domain names,
and Chinese for Chinese language .hk domain names or .香港 domain
names.32 The language is subject to any agreement otherwise between the
parties or as otherwise determined by the panel.
56. For more information regarding the HKDRP procedure, please refer to
Annex 2: Flowchart for HKDRP Proceedings.
2.4 Other Domain Name Dispute Resolution Services Provided

by HKIAC
2.4.1 URS
57. The URS applies to all new gTLDs. As a complement to the UDRP, URS
has been designed to offer a lower-cost and faster path to relief for rights
holders experiencing the most clear-cut cases of infringement. ADNDRC
serves as one of the three ICANN-accredited URS service providers. As
the Hong Kong office of ADNDRC, HKIAC is able to administer URS
proceedings.
58. To succeed under the URS, the Complainant must show that: (i) the
disputed domain name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; (ii) the Respondent
has no legitimate right or interest in respect of the domain name; (iii) the
domain name has been registered and is being used in bad faith.
59. In URS proceedings, a determination can be expected within 25 days of
submission of a complaint and the costs are approximately one-third of
those in UDRP proceedings.33 If the outcome is in favour of the Complainant,
the registry operator will suspend the domain name. The domain name will
remain suspended for the duration of the registration period and will not
resolve to the original website. The domain name will not be transferred to
the Complainant.
60. URS proceedings at HKIAC are governed by the URS procedure (“URS
31 Paragraph 4(a)(iv) HKDRP.

32 Paragraph 11 HKDRP Rules.
33 See Article 14 URS Supplemental Rules for the applicable fees.
20
Procedure”) effective from 1 March 2013; the Uniform Rapid Suspension
System Rules (“URS Rules”) effective from 28 June 2013; and the ADNDRC
URS Supplemental Rules (“URS Supplemental Rules”) effective from 8
September 2014.
61. If a URS complaint passes the initial review conducted by HKIAC, the
registry operator must lock the disputed domain name(s) within 24 hours of
being notified by HKIAC. The administrative review is to determine that the
complaint has included all the necessary information to be compliant with the
filing requirements, instead of determining whether a prima facie case has
been established. Given the rapid nature of the procedure, the Complainant
will not have the opportunity to rectify deficiencies in the complaint and the
complaint will be dismissed if deficiencies exist. The registrant will have 14
calendar days to respond to the complaint once notified.
62. The URS dispute will be determined by a single examiner appointed by
HKIAC from the ADNDRC Administrative Panel within one calendar day
after HKIAC confirms receipt of the response or sends a notice of default
for failure to submit a response. The examiner will render its determination
within three business days of being appointed. If a URS proceeding results
in a determination that one or more domain names must be suspended,
the registry operator must implement the suspension.
2.4.2 TM-PDDRP
63. The TM-PDDRP is a rights protection mechanism designed to provide

trademark holders (whether their marks are registered or not) to dispute
the actions of a gTLD registry operator which lead to or support trademark
infringement, either on the top level or second level domains. The TM-
PDDRP allows a party to request sanctions against a new gTLD registry for
participating in a scheme to encourage trademark infringement.
64. ADNDRC is an ICANN-accredited TM-PDDRP service provider. As the
Hong Kong office of ADNDRC, HKIAC is able to administer TM-PDDRP
proceedings.
65. The proceedings are governed by the TM-PDDRP effective from 4 June
2012; the Rules for TM-PDDRP; and the ADNDRC TM-PDDRP Supplemental
Rules (“TMDDRP Supplemental Rules”) effective from 10 March 2014.
66. Under the TM-PDDRP, the language of all submissions and proceedings is
English. Parties can submit supporting evidence in their original language
provided that such evidence is accompanied by a certified, or otherwise
official, English translation of all relevant text unless determined otherwise
by the Expert Panel.
21
67. All complaints are initially reviewed by a sole panelist appointed by HKIAC
(“Threshold Review Panel”) . The role of the Threshold Review Panel is to
determine whether the complaint satisfies the criteria set out in Section 9 of
the TM-PDDRP. If the Threshold Review Panel determines the Complainant
has satisfied the criteria, a second panel comprising either one or three
panelists (“Expert Panel”) will be appointed by HKIAC. The Expert Panel
will determine whether a registry operator is at fault on the merits and
recommend remedies to ICANN.
2.4.3 TDRP
68. The TDRP is applicable to disputes between two ICANN-accredited

registrars for disputes arising out of inter-registrar domain name transfers. A
dispute filed under the TDRP can be submitted to a registry operator (first-
level disputes) and/or to ADNDRC (second-level disputes). ADNDRC is one
of the two ICANN-accredited dispute service providers for second level
disputes under the TDRP. As the Hong Kong office of ADNDRC, HKIAC is
able to administer proceedings under the TDRP.
69. The TDRP and ADNDRC Supplemental Rules to the TDRP (“TDRP
Supplemental Rules”) effective from 24 January 2014 govern disputes
under the TDRP handled by HKIAC.
70. A dispute can be submitted to HKIAC under the TDRP in two situations:
(i) the filing registrar elects to skip the first-level dispute process at registry
operator level; and (ii) the non-prevailing registrar in a first-level dispute
proceeding wishes to appeal the applicable registry operator’s decision.
Additionally, in the case where the result in the first-level dispute process
is a “no-decision”, in which case either registrar may file an appeal of such
decision to HKIAC.
71. HKIAC will be responsible for appointing a panel which can comprise
either one or three panelists, as determined under the TDRP and the
TDRP Supplemental Rules (“ Dispute Resolution Panel”). 34 The Dispute
Resolution Panel may either (i) order the transfer of the domain name (or
approve the transfer in the case of an appeal); or (ii) deny the transfer (or
deny the transfer in the case of an appeal).
2.4.4 PHDRP
72. The Uniform Dispute Resolution Policy adopted by dotPH, Inc. (“PHDRP”)
applies to disputes involving registered .ph domain names, the ccTLD for
34 Article 7 TDRP Supplemental Rules.
22
the Philippines. Under the PHDRP, a Complainant can file a complaint with a
DNDR provider appointed by dotPH, Inc. HKIAC was appointed by dotPH,
Inc. on 1 June 2005. This service is not linked to ADNDRC.
73. Disputes arising under the PHDRP are governed by the PHDRP; dotPH
Uniform Dispute Resolution Implementation Rules (“PHDRP Rules”);
and the HKIAC PHDRP and PHDRP Rules Supplemental Rules (“PHDRP
Supplemental Rules”) effective from 17 April 2015.
74. The PHDRP adopts a modified version of the UDRP. There are some notable
differences as follows: (i) the time period to resort to court proceedings
is 30 business days35 whereas the UDRP provides for ten business days;36
(ii) all communications shall be in English only;37 and (iii) with respect to
any challenges to a decision in the administrative proceeding cancelling
or transferring the domain name, the Complainant must submit to the
jurisdiction of the courts in at least one specified mutual jurisdiction (i.e.,
court jurisdiction in the Philippines, or the court jurisdiction at the location
of the domain name holder, or both).38
2.4.5 SDRP, CEDRP and UDRP-F
75. In 2014, ADNDRC was appointed by several new gTLD registries to

establish English and Chinese dispute resolution policies and to act as their
domain name dispute provider. Those polices are the SDRP and CEDRP.
ADNDRC was also appointed by the Organisation for OP3FT to provide
UDRP services for Frogans addresses under the UDRP-F. These new
developments broadened the services offered by ADNDRC, and through
its role as the Hong Kong office of ADNDRC those of the HKIAC.
76. The purpose of the SDRP is to resolve disputes over domain names
improperly allocated during a registry’s Sunrise Period. SDRP disputes are
typically time limited. Since 2013, ADNDRC has been appointed by registry
operators to provide Sunrise Dispute Resolution Services for the following
new gTLDs:
35 Paragraph 4(k) PHDRP.

36 Paragraph 4(k) UDRP.
37 Paragraph 11 PHDRP Rules.
38 Paragraph 3(xii) PHDRP Rules.
23
Registry Operator TLD(s)
Beijing Qianxiang Wangjing Technology Development <.ren>
Co., Ltd.
China Organisational Name Administration Center <.政务> <.公益>
China Internet Network Information Center <.公司> <.网络>
Elegant Leader Limited <.xin>
Guangzhou Yu Wei Information Technology Co., Ltd. <.广东> <.佛山>
HUYI Global Information Resources (Holding) Company <.商标> <.餐厅>
Hong Kong Limited
Jiangsu Bangning Science & Technology Co., Ltd. <.top>
77. The CEDRP applies to second-level domain names ending in .商标 and
offers a mechanism of relief for parties claiming that a domain name
registered in the .商标 TLD does not meet the registration requirements.
78. The UDRP-F has been adopted by the OP3FT for the purpose of protecting
trademark holders from abusive registrations of network names and site
names of Frogans addresses. While the UDRP-F is based on the UDRP,
there are some changes, most notably a different nomenclature, rather than
domain names, Frogans addresses use a system of network names and
site names. Disputes may be brought over either a network name or a site
name.
2.5 HKIAC Domain Name Dispute Resolution Panel

79. HKIAC maintains a panel of individuals qualified to serve as domain name
dispute resolution panelists (“HKIAC DNDR Panel”). HKIAC will appoint
panelists from the HKIAC DNDR Panel for .hk; .cn; and .ph domain name
disputes arising out of the HKDRP, CNDRP and PHDRP. The HKIAC DNDR
Panel is composed of 107 experienced neutrals from 21 countries or
territories with proficiency in 20 languages.39
80. A candidate who wishes to be considered for inclusion on the HKIAC
DNDR Panel must demonstrate to the HKIAC Appointments Committee
the following: (i) at least three years’ experience resolving domain name
disputes; or (ii) relevant experience acting as an arbitrator, adjudicator and/
or serving in other relevant adjudicative roles; or (iii) other relevant expertise
39 As of February 2022.
24
in the field of law, intellectual property, or information technology.40
2.6 ADNDRC Administrative Panel

81. ADNDRC maintains a panel of individuals to serve as DNDR panelists
(“ADNDRC Administrative Panel”). HKIAC, in its capacity as the Hong
Kong office of ADNDRC, will appoint panelists from the ADNDRC
Administrative Panel for domain name disputes arising out of the UDRP,
URS, TM-PDDRP, TDRP, UDRP-F, SDRP and CEDRP. The ADNDRC panel is
composed of 129 experienced neutrals from 25 countries or territories with
proficiency in 26 languages.41
82. A candidate who wishes to be considered for inclusion on the ADNDRC
Administrative Panel must demonstrate to the ADNDRC Panel Selection
Committee the following: (i) at least ten years’ experience in intellectual
property and/or technology law; (ii) practical experience in name dispute
resolution, arbitration or other dispute resolution mechanisms; (iii) an
established and recognised reputation in his/or field; and (iv) no record of
misconduct by a court or disciplinary tribunal which calls into question the
candidate’s ability to act as a Panelist.42
2.7 HKIAC Case Statistics

Number of cases handled by policy between January 2018 and
December 2021
Policy Number of cases Percentage

UDRP 520 65.9%
CNDRP 230 29.2%
HKDRP 34 4.3%
URS 5 0.6%
40 For further details on how to apply, the term, and renewal for the HKIAC Panel visit: https://hkiac.org/ip-and-
domain-name/dnd-panel-criteria-and-application-procedure.
41 As of February 2022.
42 For further details on how to apply, the term, and renewal for the ADNDRC Panel visit: https://www.adndrc.org/
register_panellist.
25
Top Ten Domiciles of Complainants between January 2018 and
December 2021
Domicile of Complainant Number of Complainants Percentage

USA 201 25%
Mainland China 162 20%
Hong Kong 110 13%
Cayman Islands 50 6%
Germany 46 6%
Switzerland 38 5%
Belize 35 4%
UK 28 3%
Singapore 26 3%
Sweden 20 2%
Top Ten Domiciles of Respondents between January 2018 and December

2021
Domicile of Respondent Number of Respondents Percentage

USA 55 7%
Hong Kong 42 5%
Bangladesh 14 2%
Taiwan 8 1%
Philippines 7 1%
Russia 7 1%
Vietnam 7 1%
Australia/India/UK 4 1%
26
Top Ten Geographic Origins of Panelists appointed between January
2018 and December 2021
Geographic Origin of Panelist Number of Panelists Percentage

Hong Kong 228 30%
Australia 162 21%
Dual nationals* 81 11%
Singapore 50 6%
Canada 35 5%
Taiwan 32 4%
UK 32 4%
USA 28 4%
France 22 3%
*List of nationalities of the dual nationals appointed between January

2018 and December 2021
Nationalities of the dual nationals Number of Panelists Percentage
Hong Kong/ UK 37 46%
New Zealand/ USA 18 22%
Israel/ UK 9 11%
Australia/ UK 5 6%
Hong Kong/ USA 5 6%
Australia/ Hong Kong 4 5%
Canada/ Hong Kong 3 4%
27
Constitution of Panel in cases filed between January 2018 and December
2021
13 cases (2%)
One-member Panel
701 cases (98%) Three-member Panel
Language of Proceedings in cases filed between January 2018 and

December 2021
Language of Proceedings Number of cases Percentage
Chinese 437 57%

English 336 43%
Outcome of Complaints in cases filed between January 2018 and

December 2021
Outcome of Complaint Number of cases Percentage

Transferred 690 87.9%
Cancelled 9 1.1%
Denied 20 2.5%
Split (partially transferred/
2 0.3%
cancelled and partially denied)
Terminated (Withdrawn /
Consolidated/Settled/ 64 8.2%
Dismissed by HKIAC)
28
3. Selected Procedural Issues
83. This section highlights some of the common procedural issues that have
arisen in DNDR proceedings submitted to HKIAC. Many of the issues
illustrated here have arisen in UDRP proceedings as it is the policy under
which disputes are most commonly submitted to HKIAC in its capacity of the
Hong Kong office of the ADNDRC. Where procedural issues unique to other
policies have arisen those have also been highlighted. This guide is updated
on a regular basis as relevant decisions in HKIAC proceedings are rendered.
3.1 Re-filing a Complaint

84. A re-filed case involves the Complainant submitting a second complaint
involving the same domain name and the same Respondent where an earlier
complaint was denied or otherwise withdrawn. It is generally accepted that
a re-filed case in which a final decision has been rendered may only be
accepted in limited circumstances.43 Paragraph 15(a) of the UDRP Rules,
which provides that: “A Panel shall decide a complaint on the basis of the
statements and documents submitted and in accordance with the Policy,
these Rules and any rules and principles of law that it deems applicable” has
been interpreted to grant a panel broad discretion to apply “any rules and
principles of law that it deems applicable.”44 Such discretion as referred to
by panels includes widely accepted legal principles such as res judicata (the
preclusion of identical claims from being litigated when they have already
been decided with finality) intended to prevent Complainants imposing on
Respondents the burden of responding to repetitious complaints.45
85. In Creo Products Inc. v. Website In Development,46 it was held that a
re-filed case can only be accepted in a very limited set of circumstances,
which include: (i) where the Complainant establishes that legally relevant
developments have occurred since the original decision; (ii) a breach of
natural justice or of due process has objectively occurred; (iii) where serious
misconduct in the original case that influenced the outcome is subsequently
identified; (iv) where raw material evidence that was reasonably unavailable
to the Complainant during the original case is presented; or (v) where the
case has previously been decided expressly on a “without prejudice” basis.
43 WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”) section
4.18.
44 Paragraph 15(a) UDRP Rule.
45 WIPO Jurisprudential Overview 3.0 section 4.18.
46 Creo Products Inc. v. Website In Development, D2000-1490 (WIPO 19 January 2001).
29
86. These principles have generally been followed by panels appointed by
HKIAC. In a Chinese language decision under the CNDRP, Trainingmask
LLC v. Xu Jing (HKIAC Case No. DCN-1600717, 15 February 2017), the
Complainant Trainingmask LLC waited for a year to resubmit the case
to HKIAC after failing to prevail before a panel appointed by CIETAC.
The HKIAC panel considered that there was a strong presumption that
the dispute resolution procedure had been abused by the Complainant.
Instead of taking the matter to a competent court, the Complainant waited
for approximately one year and tried to re-file the case with a different service
provider. In the HKIAC administered proceeding, the case was dismissed
on the basis of res judicata, which suggests that HKIAC panels are willing
to avoid repetitive disputes over the same domain name in order to protect
the finality of a previous panel’s decision. Therefore, unless significant new
circumstances have arisen or new evidence has been discovered, parties
should generally avoid re-filing a case involving a domain name dispute
which has already been determined.
87. In a proceeding under the HKDRP, M&M Company Limited and Waimanly
International Lmited v. Mini Pit Limited (HKIAC Case No. DHK-1400117,
24 February 2015), the Complainants requested the panel to transfer the
domain name <www.iimo.com.hk> to them. The Respondent, Mini Pit
Limited, was the original licensed distributor for the first Complainant M&M
Company Ltd., a Japanese toy manufacturer, in Mainland China, Hong Kong
and Taiwan. The Respondent continued to possess the disputed <www.
iimo.com.hk> domain name after its “reselling and other rights” were
terminated pursuant to a “termination notice”. In the original proceeding,
the panel was not able to find bad faith by the Respondent and dismissed
the claim. Soon after the decision was rendered, the Complainants re-
filed the case at HKIAC. In the re-filed complaint, they contended that
the first panel had misinterpreted the underlying agreement and “had a
gross misunderstanding and indeed a wrong finding of facts… that led to a
breach of natural justice.” According to the Complainants, the re-filed case
was the “mere pursuit of defending their rights to a fair and just opportunity
to have their case properly considered.” In the re-filed proceeding, the
HKIAC panel adhered to the Creo Products standards and decided that
the case did not warrant being reopened. In addition, the panel reasoned
that, unlike in UDRP proceedings, “HKDRP proceedings are designed
to be mandatory arbitration proceedings and that an award made by an
arbitral tribunal pursuant to an arbitration agreement is final and binding
on the parties.” The panel decided that on the totality of circumstances,
“the previous panelist has taken into consideration all materials before
him in reaching his decision” and “there is[no] serious irregularity in the
decision of the previous Complainant.” If parties would like to challenge
30
the decision, “there are statutory options available to the Complainants…
in a court of law”47 and to challenge a HKDRP decision parties should follow
procedures one would follow to challenge an arbitral award rendered in
Hong Kong.
3.2 Time Bars

88. The general view and recommendation of the Final Report of the WIPO
Internet Domain Name Process published on 30 April 1999 (the “WIPO
Final Report”) are that a time bar to bring claims in respect of domain
names should not be introduced.48 This is based on principles that trademark
owners are not usually expected to be permanently monitoring every
instance of potential trademark abuse, or to be constantly trying to enforce
them.49 According to one WIPO panel the remedy in UDRP proceedings is
injunctive rather than compensatory in nature, where the principal concern
is to halt ongoing or future abuse instead of providing equitable relief to
the winning party. 50 Therefore, under the UDRP, it usually does not matter
that there has been a delay between the registration of a domain name and
the filing of a complaint.
89. Unlike the UDRP, CNDRP sets a time bar which stipulates that no complaints
relating to the registration of “.cn” or “.中国” domain names more than
three years old will be accepted.51 The time bar was changed from two
years to three years when the updated CNDRP took effect on 18 June 2019.
The HKIAC does not accept complaints involving disputed domain names
which have been registered for more than three years. This time bar has in
the past been criticised for imposing unreasonable time limits that would
prevent the fair and equitable enforcement of intellectual property rights.
90. Before 18 June 2019, some HKIAC panels considered that the transfer of
a “.cn” domain name to a third party constituted a new registration with
the effect of re-setting the then effective two-year time bar. In Lester
Brands AV v. Chen Qiuheng (HKIAC Case No. DCN- 1500641, 10 October
2015) regarding the domain name <www.leister.net.cn>, the HKIAC panel
ruled that the transfer of a “.cn” domain name from one party to another
constituted a new registration under the CNDRP and therefore “reset”
the two-year time limit for bringing a domain name complaint. According
47 M&M Company Limited and Waimanly International Lmited v. Mini Pit Limited (HKIAC Case No. DHK-1400117,
24 February 2015) pages 22-23.
48 Paragraphs 197-99 WIPO Final Report.
50 The Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO 7 October 2002).
51 See Article 2 of CNDRP.
31
to the panel, the language “registering or acquiring,” which appeared in
Article 9 of the CNDRP for the purpose of considering the registrant’s bad
faith, indicated that a domain name that has been assigned or transferred
to another party can be subject to the CNDRP if an “acquisition” occurred
within two years before an administrative proceeding is commenced. The
panel found that since the procedures for registration and assignment of a
domain name were substantially similar, the assignment of a domain name
was essentially a form of registration. The panel also referred to the fact that it
has generally been accepted that the transfer of a domain name constituted
a new registration under the UDRP for the consideration of bad faith. Two
years after Lester Brands AV was decided, a transfer from one party to a third
party that occurred within the two years before a CNDRP complaint was filed
was again considered as re-setting the two-year time bar; see Airbnb Inc. v.
Guo Lanzhi (HKIAC Case No. DCN-1700742, 3 July 2017).
91. More recently, since the time bar was adjusted from two years to three
years, CNNIC has confirmed to HKIAC that the three-year time bar starts
from the date of registration of the domain name, and that transfers do not
reset the time limit for filing a complaint. CNNIC has recommended that
HKIAC should not accept complaints where the date of registration is time
barred (i.e., over three years from the date the complaint is filed).
3.3 Identity of the Respondent

92. After the General Data Protection Regulation (“GDPR”) came into effect
on 25 May 2018, some registrars blocked out the personal data of the
registrant. Thus in some cases, the WHOIS information of registrants is
protected by privacy or proxy registration service. The details of those
registrants are not disclosed to the public. Therefore, the Complainant may
have difficulties in identifying the identity of the Respondent when filing the
complaint. The Complainant can, however, submit the complaint with the
named registrant listed in the WHOIS register.
93. Upon receipt of the complaint, HKIAC will verify the identity of the registrant
with the registrar. HKIAC will provide any disclosed underlying registrant
information to the Complainant and invite the Complainant to amend the
corresponding parts of the complaint as necessary.
94. In all cases involving a privacy or proxy service, the panel retains the discretion
to record only the underlying registrant as the named Respondent, or both
the privacy or proxy service and any underlying registrant as the named
Respondent depending on the evidence and circumstances of the case.
For instance, in cases where there is no clear disclosure of Respondent’s
identity, or the panel finds some indication that the privacy or proxy
32
provider is related to the underlying registrant or the use of the disputed
domain name(s), the panel may find it appropriate to record both.
3.4 Consolidation of Claims

95. Paragraph 4(f) of the UDRP allows the consolidation of complaints if they
involve multiple disputes between the Complainant and the Respondent.
Either party may petition to consolidate the disputes to be decided by
the same panel. A single proceeding is appropriate “where the particular
circumstances of a given case indicates that [a] common [ownership or]
control is being exercised over the disputed domain names or the websites
to which the domain name resolves.”52 Therefore, as the language of the
UDRP indicates, such consolidation can only occur in multiple disputes
involving the same Complainant against the same Respondent. Pursuant
to paragraph 4(f) of the UDRP, the first panel to which a request for
consolidation is submitted “may consolidate before it any or all such
disputes in its sole discretion”.
96. In a UDRP proceeding, Evergrande Realestate Group Co., Ltd. v. Central
American Domain Authority Ltd (ADNDRC Case No. HK-18010195, 16
June 2019), the Complainant filed a complaint against the Respondent with
the Beijing office of the ADNDRC. The Complainant was the unsuccessful
party in the proceedings. The Complainant subsequently refiled another
complaint with new supporting evidence to the Hong Kong office of the
ADNDRC against the same Respondent. The Respondent requested to
consolidate the original action with the ongoing proceedings pursuant to
paragraph 4(f) of the UDRP. The panel in the ongoing proceedings dismissed
the Respondent’s request on the basis that “. . . the original action is a
concluded matter, not a pending case; and the Original Panelist has become
‘functus officio’ after handing down her decision in the Original Action…”.
97. In some cases, the Complainant may not be able to identify the registrant
of the disputed domain name due to the GDRP. For instance, three UDRP
cases Rimowa GmbH v. Joyce Cheadle (ADNDRC Case No. HK-1901224,
16 June 2019), Rimowa GmbH v. Joyce Cheadle (ADNDRC Case No. HK-
1901225, 16 June 2019) and Rimowa GmbH v. Joyce Cheadle (ADNDRC
Case No. HK-1901226, 16 June 2019), were submitted by the same
Complainant. The Respondents’ identities in these three cases were hidden
because of the GDPR. The Complainant submitted that the Respondents
52 Gerald M. Levine, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting
under the Uniform Domain Name Dispute Resolution Policy (“Domain Name Arbitration”) (2nd Edition, Legal Corner
Press, LLC, 2019), at 518.
33
were the same and requested the panelist to consolidate the three cases.
HKIAC invited the Respondents to comment on the Complainant’s request
but received no response. The panelist issued a procedural order to notify
the parties that he had granted the consolidation request in accordance
with paragraph 10(e) of the UDRP Rules on the basis that the identity of the
registrant and contact information provided by the registrar were the same
in these cases.
3.4.1 Multiple Registrants
98. Pursuant to paragraph 1 of the UDRP Rules, “Respondent” is defined as

the holder of a domain name. HKIAC jurisprudence shows that sometimes
the true identity of the beneficial owner is undisclosed. It is common for
domain name registrars to have incomplete information about the domain
name right holder, either because the domain name right holder has used
different names when registering different domain names, or because the
domain name is owned by a controlling entity and the entity has used
different employees’ names to register with different registrars.
99. WIPO allows the parties to amend the complaint to include domain name
holders that are discovered at a later stage of the proceedings to prove
that the disputed domains are held by the same controlling entity. HKIAC
allows such requests to proceed for final determination by the panel where
there is a prima facie case that the complaint involves disputes against the
same Respondent. For example, if different domain names are registered
under the same address, or if the contact person uses the same contact
information.
100. The factors that panels take into account when determining a request for
consolidation include but are not limited to: (i) the Respondents’ identity(ies)
including pseudonyms; (ii) the Respondents’ contact information such as
email address(es), postal address(es) and phone number(s); (iii) the content
or layout of websites of the disputed domain names; (iv) the nature of the
trademarks involved; or (v) relevant language or naming patterns of the
disputed domain names.53 Also see Charles Schwab & Co Inc. v. Wang
YanRong and Rong, (ADNDRC Case No. HK-1400639, 10 October 2014).
3.4.2 Multiple Related Domain Names
101. According to paragraph 3(c) of the UDRP Rules, the complaint may relate to
one or more domain names, provided that the domain names are registered
53 WIPO Jurisprudential Overview 3.0 section 4.11.2.
34
by the same Respondent. HKIAC panels often grant consolidation requests
in complaints against multiple related domain names held by the same
Respondent. In Tencent Holding Limited v. Zhou Hongsheng (HKIAC
Case No. DCN-1700727, 6 April 2017), the 129 “.com” domain names that
were related to the “Tencent” trademarks were consolidated into the same
proceeding and a decision was rendered in favour of the Complainant.
Other similar recent cases in which complaints related to more than one
domain name include Facebook Inc. v. Zhang Guo Jie (HKIAC Case No.
DCN-1600706, 8 November 2016), Paul Smith Group Holding Limited
v. Geraldine McDonagh (ADNDRC Case No. HK-1700956, 11 May 2017),
Suning Commercial Group v. Yuan Bing (ADNDRC Case No. HK-1700955,
25 April 2017), Tencent Technology (Shenzhen) Company Limited and
Holding Limited Company v. Lim Sang Woon (ADNDRC Case No. HK-
1700964, 25 May 2017), Marquee Holdings Ltd v. winner harry (ADNDRC
Case No. HK-1901277, 30 December 2019), and LEGO Juris A/S (乐高博士
有限公司) v. 武汉麦成电子商务有限公司 (HKIAC Case No. DCN-1900901,
28 August 2019).
3.5 Panelist Conflicts of Interest

102. In its appointment process, the HKIAC requests candidates to disclose
any potential conflicts of interest before accepting an appointment.
Specifically, candidates are asked to declare to the parties and HKIAC any
circumstances which are likely to create an impression of bias or prevent a
prompt resolution of the dispute between the parties.54 Once appointed,
the panelist has an ongoing obligation to declare any such circumstances
for the duration of the appointment.55
103. HKIAC takes a conservative approach when appointing panelists who have
made disclosures to ensure their independence and impartiality and to
minimise disruption to proceedings. Common examples of disclosures,
which have resulted in a candidate not being appointed include a
candidate’s law firm advising or representing one of the parties in a related
or unrelated matter. This includes circumstances in which the candidate has
no involvement in the matter being disclosed and/or the matter is being
handled by another office of the firm. Only in situations where the parties
have consented to such an appointment would the appointment proceed.
In most instances where the Respondent is not participating, obtaining
consent is not likely and would merely delay the appointment of a panelist.
As such, HKIAC would usually proceed to appoint another candidate in
54 Article 9(2) ADNDRC Supplemental Rules.

55 Article 9(2) ADNDRC Supplemental Rules.
35
such circumstances. As a result of the approach taken by HKIAC, requests to
disqualify or remove a panelist in HKIAC administered DNDR proceedings
are rare.
104. The same approach is taken for ongoing proceedings where a panelist
has already been appointed. In BB IN Technology Co., Ltd and YANG,
JEN-CHIEH (楊仁傑) v. Tian long (ADNDRC Case No. HK-2101502, 10
September 2021) following the appointment, the panelist disclosed
to HKIAC that circumstances had since arisen which might give rise to
justifiable doubts as to his impartiality and independence despite the
panelist confirming that he did not consider that his impartiality and
independence would be impacted. HKIAC exercised its discretion and
appointed a substitute panelist.
3.6 No Response
105. It is common for Respondents not to participate in DNDR proceedings.
Between January 2018 and December 2021, HKIAC records show that
Respondents did not participate in 88% of cases and that in only 96 cases
(12% of the total cases) did the Respondent file a response. During the
same time period, Respondents were represented by legal counsels in 13
cases (2% of the total cases).
106. In DNDR proceedings, a Respondent’s failure to respond does not prevent
the case from proceeding, nor does it automatically result in a decision in
favour of the Complainant. Panels may find that a Complainant has failed
to prove the claims despite the Respondent being in default if unsupported
allegations have been advanced by a Complainant. Respondent’s failure to
respond does not mean that the Complainant’s claims are accepted. There
are cases in which complaints have been based on wholly unsupported
assertions where the decisions were made in the Respondent’s favour
without the Respondent responding to the complaint.56
107. In accordance with paragraph 5(f) of the UDRP Rules, if a Respondent does
not submit a response, the panel will decide the dispute solely based
upon the complaint. Typically, panels treat the submission of an informal
response by a Respondent in a similar manner as a Respondent in default.
An informal response refers to unsupported and conclusory statements, or
statements that do not address the three elements in the UDRP and other
relevant claims advanced by the Complainant.57
56 See Wong To Yick v. Chun Hoi Cheung (ADNDRC Case No. HK-1600908, 30 November 2016, https://www.adndrc.
org/diymodule/docUDRP/HK-1600908_Decision.pdf).
36
3.7 Delayed Responses
108. Pursuant to paragraph 5(a) of the UDRP Rules, the Respondent has 20 days
from the date of commencement of the proceeding to submit a response to
the complaint. According to paragraph 5(b) and (e) of the UDRP Rules, the
Respondent may expressly request an additional four calendar days in which
to respond to the complaint. The service provider must automatically grant
the extension. This extension does not preclude any additional extensions
being requested, which may be granted in exceptional circumstances. It is
HKIAC’s standard practice to invite the Complainant’s comments on such a
request before deciding whether to grant the extension.
109. A recent example of a situation where an extension was granted was in a
UDRP proceeding, Hangzhou Huihong Technology Co., Ltd. v. Cai Ruizhen
(ADNDRC Case No. HK-2101540, 11 November 2021). The Respondent
requested a 30-day extension to file the response due to the lockdown
measures placed on the Respondent’s city of residence in Mainland China.
HKIAC invited the Complainant to comment. The Complainant agreed to
an extension of up to ten days. HKIAC considered both parties’ requests
and granted a 15-day extension.
110. In the event that one party continues to delay the proceeding, panels often
cite paragraph 10(a) of the UDRP Rules when deciding to allow a particular
claim. Paragraph 10(a) provides that the panel shall conduct the proceeding
in such a manner as it considers appropriate in accordance with the UDRP
and the UDRP Rules. The panel has a duty to ensure that the parties are
treated equally and that each party is given a fair opportunity to present
its case.58
3.8 Settlement or Suspension of Proceedings
111. The UDRP provides that a proceeding may be suspended to facilitate

settlement negotiations, or to implement a settlement agreement between
the parties.59 Parties that have agreed to settle after a proceeding has
commenced need to submit the standard HKIAC settlement form. For
settlement prior to panel appointment, HKIAC will refund the panelist fees
as well as a portion of the administrative fees on a pro rata basis depending
on the stage of the proceedings. For settlement after the panel has been
appointed, no refund of the administrative fees and panel fees will be issued
by HKIAC according to Article 15.6 of the ADNDRC Supplemental Rules.

59 Paragraph 17 UDRP Rules.
37
112. In Rimova GmbH v. Chi Wai Kwan (ADNDRC Case No. HK-1700945, 10
April 2017), after the deadline for the Respondent to file a response had
expired, emails were exchanged between the parties and HKIAC, which
resulted in the proceedings being suspended with a view to achieving
settlement. The proceeding was suspended for more than 30 days. However,
no settlement was reached and the proceeding resumed. In another matter,
prior to the appointment of a panelist, the Respondent informed HKIAC
and the Complainant that it was willing to transfer the domain name to
the Complainant. Following confirmation from both parties in the form of
a standard settlement agreement, HKIAC informed the registrar and the
registrar implemented the settlement accordingly.
3.9 Consent to Transfer or Cancel Domain Name

113. In UDRP proceedings where the Respondent has consented to transfer or
cancel a domain name as requested by a Complainant, but the parties have
not reached a settlement according to the standard steps in paragraph 17
of the UDRP Rules, the panel may order the requested remedy on the basis
of such consent without making any findings adverse to the Respondent.
114. For example, in Bytedance Ltd. v Jerzy Piskadlo (ADNDRC Case No.
HK-2001343, 8 June 2020), the panel ordered the transfer sought by the
Complainant on the basis of the Respondent’s explicit consent in an email.
The panel considered that determining the three elements in paragraph
4(a) of the UDRP and rendering a substantive decision were unnecessary. In
some cases, a panel may in its discretion issue a substantive decision on the
merits, despite the Respondent’s express consent. Such cases include but
are not limited to the Complainant having requested a substantive decision
for the record, or the panel finding it necessary to assess the case on the
merits, in respect of, for example, relevant trademark rights and bad faith.60
3.10 Language of Proceedings
115. The various DNDR policies and rules will specify the language of the
proceedings. For example, paragraph 11(a) of the UDRP Rules states
that “unless otherwise agreed by the Parties, or specified otherwise in the
Registration Agreement, the language of the administrative proceeding
shall be the language of the Registration Agreement, subject to the authority
of the Panel to determine otherwise, having regard to the circumstances
of the administrative proceeding.” The CNDRP provides that “unless
otherwise agreed by the Parties or determined in exceptional cases by the
38
Panel, the language of the domain name dispute resolution proceedings
shall be Chinese”.61 It is not uncommon, however, for parties to request
a change of language from that stipulated in the registration agreement.
Panels will generally consider practical factors in deciding whether to grant
such requests including the language abilities of the parties. In cases where
the documents are submitted in a language other than the language of the
proceeding, the panel may order a party to provide a translation in whole
or in part into the language of the proceeding. Since many websites in the
Asian region are created for Chinese speaking internet users, requiring one
party to translate documents from another language into Chinese when
the other party clearly understands Chinese would be burdensome and
inefficient.
116. In cases where the language of the registration agreement is different from
the language of the complaint, HKIAC will send bi-lingual correspondence
to the parties where possible prior to the panel being appointed. The
panel will then determine the language of the proceedings. For example,
in Valdimir Pte. Ltd. v. Admin (ADNDRC Case No. HK-2001342, 29 June
2020), the registration agreement was in Korean while the language of the
complaint was English. HKIAC sent correspondence in both English and
Korean. Once appointed, the panel determined that the language of the
proceeding was English. The bilingual case materials facilitated the panel
in resolving the dispute. In Bytedance Ltd. v. Пустовит Илья / Ilya
Pustovit (ADNDRC Case No. HK-2001335, 4 June 2020), the registration
agreement was in Russian while the language of the complaint was
English. HKIAC sent correspondence in both Russian and English. As case
materials were in Russian and English, HKIAC appointed a panelist who
was proficient in Russian and English. In内蒙古鄂尔多斯资源股份有限公司
v. Andreas Sieren (ADNDRC Case No. HK-2201587, 17 March 2022), the
registration agreement was in German while the complaint was in English.
HKIAC sent correspondence to the parties in German and English, and
appointed a panelist who was proficient in both languages. The panelist
determined that the language of the proceeding was English. In 比特大陆
科技有限公司 v. Paul Morales (Organisation: Morales) (ADNDRC Case No.
HK-2101573, 11 January 2022), the registration agreement was in English
while the complaint was in Chinese. HKIAC sent correspondence in both
English and Chinese, and appointed a panelist who is proficient in both
languages. The panelist determined that the language of the proceeding
was Chinese. The language proficiency of a panelist is often a key factor for
HKIAC in making an appointment.
61 Article 6 CNDRP.
39
117. The factors panelists take into account before reaching decisions as to what
language is to be used include but are not limited to: (i) the Respondent’s
familiarity with the Complainant’s language demonstrated by (a) the
content of the website and the language used in the website to which the
disputed domain name is resolved and (b) the correspondence between
the Complainant and the Respondent; (ii) the intended market of the
advertised goods on the website to which the disputed domain name is
resolved; (iii) the predominant language used in the Respondent’s country
or territory; (iv) the language of evidence submitted by parties; and (v) the
time and cost efficiency of arranging translations.
3.11 Procedural Orders
118. Paragraph 12 of the UDRP Rules provides that “in addition to the complaint
and the response, the panel may request, in its sole discretion, further
statements or documents from either of the parties”. This power is usually
exercised by issuing a procedural order. HKIAC panels have issued procedural
orders addressing a range of matters, including requesting the submission
of supplemental evidence, granting a party’s request to extend a deadline,
and granting a party’s request to change the language of the proceeding.
119. For example, in NBA Properties v. Li Junyi (ADNDRC Case No. HK-
1700994, 16 August 2017), by procedural order, the panel accepted the
submission of supplemental evidence by the Complainant and set a new
deadline for the Respondent to respond to the submission. In Marshall
Amplification PLC v. Pan Xiaoyun (HKIAC Case No. DCN-1700730, 12
June 2017), by procedural order, the panel granted the Complainant’s
request to change the language of the proceeding from Chinese to English
and asked the Complainant to submit supplemental evidence. In Dell Inc.
v. Zhang Guoxiang (ADNDRC Case No. HK-1600924, 29 December 2016),
by procedural order, the panel asked the Complainant for supplemental
evidence with respect to the Complainant’s standing in this case. The
Complainant was required to submit the supplemental evidence within
seven days and a new deadline for the Respondent to respond to the
Complainant’s submission was set. In cases including 施莱伯国际有限公
司 (STARLAB INTERNATIONAL GMBH) v. STARLAB SCIENTIFIC CO.,
LTD (ADNDRC Case No. HK-18010201, 28 February 2018) and喜临门家
具股份有限公司 v. Guangzhou You Yang Network Technology Co., Ltd.
(ADNDRC Case No. HK-2101520, 18 October 2021), the panel issued a
procedural order requesting the Complainant to submit further evidence
regarding the usage history of the concerned trademarks in Mainland China
and invited the Respondent to comment on the same within a fixed time
period. As a result, the deadline for rendering the decision was extended.
40
3.12 Appealing the Decision
120. Among all DNDR mechanisms, URS is the only mechanism that allows the
losing party to file an appeal, pursuant to paragraph 19 of the URS Rules.
The appellant is obliged to introduce new admissible evidence that is
material to the determination subject to payment of an additional fee.
121. Paragraph 4(k) of the UDRP provides that each party may challenge the
panel’s decision in a court of law, by submitting the dispute to a court of
competent jurisdiction, for independent resolution before the mandatory
administrative proceeding is commenced or after such a proceeding is
concluded.62 If the Respondent commences the lawsuit after receiving the
complaint or during a proceeding, the panel has the discretion to suspend
or terminate the proceeding, or to proceed to a decision.
122. However, parties may by written notice to HKIAC and the other party
request the panel to correct any errors in computation, any clerical or
typographical errors or any errors of a similar nature within seven days
of receiving the decision.63 This is distinct to any requests to appeal the
substantive decision.
123. Unlike the UDRP and other dispute resolution mechanisms for most
ccTLDs, which are in nature administrative and do not bar either party
from resorting to court litigation, HKDRP proceedings are deemed as
arbitration proceedings under the HKAO. Under the HKDRP, the decision
of the panel (“Arbitration Panel”) is final and binding and considered to
be an arbitration award under the HKAO. A losing party cannot commence
court litigation against or challenge the arbitration award in the Hong Kong
courts except in very limited circumstances.64
3.13 Expiry of Domain Name

124. The lock placed on a disputed domain name by a registrar prohibits
unauthorised changes to the domain name during the proceeding and for
a period of 15 business days after the proceeding is concluded. However,
the lock does not prevent a disputed domain name from expiring during
a proceeding. When a domain name will expire shortly after a complaint is
filed, HKIAC will remind the parties that it is the sole responsibility of the
parties to maintain the status of the domain name, including by seeking the
renewal and/or restoration of the domain name.
62 Paragraph 4(k) UDRP Policy.

63 Article 11 (1) ADNDRC Supplemental Rules.
64 Sections 4, 5, 6 of Schedule 2 HKAO.
41
125. In order to facilitate resolution of disputes during this period, ICANN
has incorporated the Expired Domain Deletion Policy (“EDDP”) into the
registrar accreditation agreement applicable to all gTLD registrations. The
EDDP allows the Complainant to renew or restore the disputed domain
name during the redemption grace period in the event that the disputed
domain name expires during the course of the dispute. This is in addition
to the registrant’s (i.e. the Respondent’s) right to do the same during the
redemption grace period. Where the Complainant restores or renews the
domain name during this period, the Respondent will once again be the
registered owner of the domain name, effectively restoring the position
prior to expiry. Also, registrars accept either of the parties renewing the
domain name during the renewal period which is the period before the
start of the redemption grace period. As such, if either party takes action to
renew or restore the domain name, HKIAC will proceed to administer the
case. If neither party takes the necessary action, the case will be withdrawn
at the time the registry deletes the domain name.
126. In certain cases, the disputed domain name may have expired before the
complaint is filed. HKIAC may become aware of this only after receiving
the registration information from the registrar. If the domain name is still
available to be renewed or restored (for example, it is in the redemption
grace period), HKIAC will proceed with the case once the domain name
is renewed or restored. If the domain name is not renewed or restored,
HKIAC will reject the case as there is no basis for the complaint.
127. In a proceeding under the UDRP, Television Broadcasts Limited v. Tieu
Quynh of Minh Khai (ADNDRC Case No. HK-2101535, 8 September
2021), the registrar provided the registration information as requested and
later corrected such information. The subsequent update from the registrar
revealed that the domain name had expired six days before the complaint
was filed. HKIAC informed the parties. The Complainant was willing to
restore the domain name and informed HKIAC and the registrar of its
intention to do so. After the domain name was restored, HKIAC resumed
the proceeding.
42
4. Selected Legal Issues
128. This section highlights some of the common legal issues that have arisen in
DNDR proceedings submitted to HKIAC. The common legal issues arising
under each of the three elements which must be proven under the UDRP
are considered in turn. Where legal issues unique to other policies have
arisen those have also been highlighted. This guide is updated on a regular
basis as relevant decisions in HKIAC proceedings are rendered.
4.1 First Element: Domain name is identical or confusingly similar

to a trademark or service mark in which the Complainant has
rights
129. Paragraph 4(a)(i) of the UDRP sets out the first element that must be
satisfied. Namely, that (i) the domain name is either “identical” or
“confusingly similar” to the Complainant’s trademark or service mark; and
(ii) the Complainant has some “rights” in the allegedly infringed trademark
or service mark.65 We will look at each part of the first element in turn.
4.1.1 The Test for Identical or Confusingly Similar
130. Assessing the degree of similarity usually involves some side-by-side

comparison, which can be a literal comparison between the trademark
and the domain name. While each case is judged on its own facts, the
general consensus is that where a domain name incorporates the entire
trademark the domain name is considered confusingly similar to the mark
for the purpose of meeting the UDRP requirements.
131. The top-level suffix in the domain name would usually be disregarded when
a comparison is conducted, except in cases where the applicable top-level
suffix itself forms part of the relevant trademark. Ordinarily, panels disregard
TLD names in the comparison. However, the recent introduction of more
gTLDs has sometimes made a comparison including the gTLD necessary,
especially when TLDs form part of the infringed trademark.66
4.1.1 (a) Chinese Characters
132. Since Chinese characters have been allowed in domain names, Chinese
characters are generally treated the same way as alphabetic characters.
65 Gerald M. Levine, Domain Name Arbitration (2nd Edition, Legal Corner Press, LLC, 2019), at 125.
43
For example, in Shenzhen Dajiang Innovative Technology Company v.
Shenzhen South Chuang Fu Investment Limited Company (HKIAC Case
No. DCN-1600701, 31 October 2016) the panel compared a Chinese
character trademark “大疆創新” to the Chinese character domain name
<大疆創新.cn>. The domain name that contained Chinese characters was
treated the same as the original Chinese trademark and, therefore, the
disputed domain name was transferred to the brand owner.67 This point
has also been expressly recognised in the HKDRP, which has a provision
stating that for the purpose of meeting requirements in relation to Chinese
domain names, the traditional or simplified form or any other variant set out
in the Chinese Character Variant Table68 of a Chinese character appearing
in a domain name or trademark will be considered to be identical and
confusingly similar to that Chinese character.69
4.1.1 (b) Chinese Pinyin
133. Pinyin is the Chinese phonetic name of a foreign language term. It is generally
accepted by the Chinese as the roman numeric way to describe a term, while
the term itself has no substantial meaning to non-Chinese language users.
According to the WIPO Jurisprudential Overview 3.0, Chinese pinyins are
treated in the same manner as English characters.70 HKIAC panelists often
decide that the use of a trademark’s Chinese pinyin in one’s domain name
is equivalent to the use of the trademark itself, thus resulting in confusing
similarities. Panelists usually base their reasoning on the rationale that the
Chinese pinyin is more recognisable to Chinese consumers and is more
commonly used as the identifier of certain foreign brands.
134. In Mead Johnson & Company LLC v. Hong Kong Ouyear (Group) Co.
Ltd. (ADNDRC Case No. HK-1400581, 24 April 2014), the Complainant
was a US company that had registered its trademark in English characters in
the Asia Pacific Region. It also had created a Chinese name and registered
it as its own trademark. The Complainant insisted that there was a one-on-
one association of its Chinese character name and the “Mead Johnson”
brand. The panel agreed that the disputed domain name contained the full
pinyin “meizanchen” of the Complainant’s registered Chinese trademark,
and the word “meizanchen” did not have its own meaning in Chinese
67 For more examples, please see Cainiao internet technology company v. Liu Guangming (HKIAC Case No. DCN-
1500661, 26 January 2016), Perkins Holdings Limited v. Yang Dong (HKIAC Case No. DCN-1500645, 23 October
2015) etc.
68 A Chinese character combination method as used by users in regions including Hong Kong and Taiwan, available at
https://www.hkirc.hk/domain_policies/HKIRC_Chinese_Variant_Table.pdf.
69 Paragraph 4(a) HKDRP.
44
separate from the trademark. Therefore, a confusing similarity was found.71
135. In Student.com Ventures Limited v. Wang Cheng (HKIAC Case No. DCN-
1600685, 2 June 2016), the panel held that the pinyin translation used
in a domain name did not have to be the only available Chinese pinyin
of the Complainant’s trademark. In this case, the Complainant’s Chinese
registered trademark “Overseas Students Living” had various possible
Chinese pinyin translations including “liuxueshenggongyu”, which was
used by the Respondent to register a “.cn” domain name. Although the
panel agreed that “liuxueshenggongyu” was not the only available Chinese
pinyin of “Overseas Students Living”, it was considered to be confusingly
similar or identical to the Complainant’s trademark.72
4.1.1 (c) Pinyin Abbreviation
136. In Changsha Gangwei Network Technology Co. Ltd. v. Feng Lei

Zhang (ADNDRC Case No. HK-1500709, 21 April 2015), the Complainant
operated an e-commerce business that involved trading of industrial steel
products and the website was used as a selling platform. In registering its
trademark, Changsha Gangwei Network Technology Co. Ltd. did not only
use its Chinese name but had added an abbreviation of its Chinese pinyin
abbreviation “gtxh” as part of the graphic trademark. Although the disputed
domain name <www.gtxh.com> did not actually contain the trademark
of the Complainant, it was held to be confusingly similar or identical to
the Complainant’s trademark. The panel decided that firstly, the pinyin
abbreviation was associated with the Complainant’s trademark as well as its
website and products. Therefore, it should be considered as being closely
associated with the Complainant’s businesses. Secondly, the panel decided
that the pinyin abbreviation had no other meaning in the Chinese language.
Therefore, the panel held that a confusing similarity was found.
137. However, a domain name containing the Complainant’s trademark and a
commonly used pinyin abbreviation has been found by some panels not
to be sufficiently similar to the trademark. In Shenma Mobile Technology
v. Linshi Moban (ADNDRC Case No. HK-1700958, 31 May 2017), the
panel agreed that the Complainant was undisputedly the right holder of
the Chinese trademark “shenma”. However, the panel proceeded to state
that in the domain name <www.shenmady.com>, where “dy” is the pinyin
abbreviation of dianying meaning movie in Chinese, the domain name
71 See also Disney Enterprises Inc. v. My Biz Investment Group (ADNDRC Case No. HK-1000316, 13 December 2010).
72 See also Disney Enterprises Inc. v. My Biz Investment Group (ADNDRC Case No. HK-1000316, 13 December 2010,
https://www.adndrc.org/hk/CaseStorage/HK-1000316/Decision/HK-1000316_Decision.pdf.).
45
“shenmady” had additional meanings and was not confusingly similar to
the Complainant’s “shenma” trademark since “dy” is a commonly used
Chinese pinyin abbreviation.73
4.1.1 (d) Domain Name Contains More than the Full Trademark
138. Descriptive terms, which could include the length and number of sales under
a trademark, the nature, geographical area and extent of advertising and
media recognition of a brand name, are usually considered to give domain
names a “secondary meaning”. In general, for a domain name containing
more than the Complainant’s full trademark, the more such secondary
meanings are found to mislead potential consumers, the more likely they
are held to be confusingly similar to the Complainant’s original trademark.
Examples of descriptive terms that are usually found in domain names include:
(i) geographic descriptions (e.g., <perkins-china.com>, <france-pandora.
com>); (ii) names that suggest affiliated services or products of the original
trademark (e.g., <suningceo.com>, <suningsports.com>, <baiduventure.
com.cn>); and (iii) positive or negative descriptions with no substantial
meaning (e.g., <tofelgo.com>). Therefore, it is usually a matter of assessing
whether the “similarity may give rise to confusion or false association.”74
4.1.1 (d) (i) Domain Names Contain a Geographical Identifier
139. Geographical terms which are not registered as part of a trademark may
still support a finding of confusing similarity if the Complainant is able
to show that it has rights in the term sufficient to demonstrate consumer
recognition of the confusing marks.75 In Intercontinental Hotels Group v.
Wang Yue Mei (ADNDRC Case No. HK-1500784, 22 October 2015), the
geographical identifier “binhaitiandi” was included in the domain name
following the Complainant’s renowned trademark “Crowne Plaza”. It was
found to possibly mislead consumers looking for a Crowne Plaza hotel in
the “bin hai tian di” region. The panel ordered a transfer of the disputed
domain name to the Complainant. A similar holding was maintained in
Intercontinental Hotels Group v. Lan Guo Jing (ADNDRC Case No.
HK-1500783, 22 October 2015) regarding the disputed domain name
<www.crowneplazalidu.com>, in which “lidu” was the Chinese pinyin of a
Beijing district in which a Crowne Plaza hotel could be found. In Gear Up
International Limited and Evisu Group Limited v. Huxiang and Hu Yang
73 However, in Shenma Technology v. Wang Zihan (ADNDRC Case No. HK-1700969, 8 June 2017), the panelist is of
the view that <www.shenmatv.com> domain name is confusingly similar to the “shenma” trademark.
74 Todito.com S.A. de C.V. v. Affordable Webhosting Inc, WIPO D2004-0688.
46
(ADNDRC Case No. HK-2101567, 13 December 2021), the panelist ruled
that the addition of “taiwan” to the disputed domain name <evisu-taiwan.
com> did not contribute any distinctiveness to distinguish the disputed
domain name from the Complainant’s trademark “EVISU”. Therefore, the
panel found that the disputed domain name was confusingly similar to the
Complainant’s trademark.
4.1.1 (d) (ii) Trademark Followed by Suggestive Terms
140. A domain name consisting of descriptive terms that follow the trademark
can be considered by panels to be confusingly similar, especially when they
are suggestive and the Complainant’s brand is particularly reputable in an
industrial sector. In Marriot International Inc. v. Li Feng Jiao (HKIAC Case
No. DCN-1500649, 14 December 2015), “editionhotel” was found to be
similar to the Complainant’s registered trademark “Edition” in China. In
Monster Energy Company v. Li Shijie (HKIAC Case No. DCN-1700732,
4 May 2017), the Complainant’s company was engaged in the beverage
production businesses and had registered “MONSTER” and “MONSTER
ENERGY” trademarks in more than 120 countries including the PRC. The part
following the trademark in the domain name “bevcorp” was the recognised
English abbreviation of Beverage Corporation. It was held that the domain
name <www.monsterbevcorp.com.cn> was found to be confusingly similar
to the Complainant’s trademark. In Shenzhen Relx Technology Co. Ltd. v
lulu wong (ADNDRC Case No, HK-2101576, 24 January 2022) the panelist
held that the addition of the suggestive term “mall” to the disputed
domain name <relx-mall.com> could mislead potential consumers of the
Complainant due to the nature of the Complainant’s business. The panel
held that such an addition did not diminish the similarity between the
Complainant’s trademark and the disputed domain name.
4.1.1 (d) (iii) Trademark Followed by Words Without Substantial Meaning
141. A domain name consisting of a common, obvious, or negative term, or of

an intentional misspelling of the trademark is often considered by panels
to be confusingly similar. In Westinghouse Electronic Corporation v. Chen
Hongwei (ADNDRC Case No. HK-1500704, 22 March 2015), the panel
was of the view that the disputed domain name “westinghouseke” fully
incorporated Complainant’s registered trademark “westinghouse”. The
panel found that the addition of letters “ke” at the end of “westinghouse”
did not hide the fact that the spelling, pronunciation and overall appearance
of the two were confusingly similar. In BB IN Technology Co., Ltd. and
Yang, Jen-Chieh v. Li Xie (ADNDRC Case No. HK-2101517, 16 September
47
2021) the panelist ruled that when examining the similarity between the
disputed name <bbinw8.com> and the Complainant’s trademark “BBIN”,
the addition of “w8” did not constitute a distinctive element and had no
substantial meaning. Therefore, the panel held that it could be ignored.
4.1.1 (d) (iv) Domain Name Contains Two or More Trademarks
142. When domain names contain the Complainant’s trademark in addition to

a third party’s mark, the panel is usually of the view that such addition is
insufficient in itself to avoid a finding of confusing similarity.76 In initiating
such a proceeding, the consent of the third-party mark holder is not
required. Sometimes, domain name registrants register domain names
which combine two trademarks of companies pending a merger transaction.
In Norton Rose Fulbright LLP v. Zuo Pan and Qinhuangdao Nuo Dun
Luo Shi Fu Bu Lai Te IP Agency (ADNDRC Case No. HK-1500686, 16
March 2015), the disputed domain names <www.norton-rose-fulbright.
com> and <www.nortonrose-fulbright.com> were found to be confusingly
similar to the Complainant’s “Norton Rose” trademark. The Complainant
had only applied to register its trademark “Norton Rose Fulbright” with the
Trademark Office of the State Administration for Industry and Commerce
of the PRC at the time the complaint was filed. The domain names <www.
norton-rose-fulbright.com> and <www.nortonrose-fulbright.com> were
both found to be confusingly similar to the Complainant’s trademark based
on the established business reputation of the British law firm Norton Rose
and the American law firm Fulbright & Jaworski LLP before the merger of
the two entities. The fact that these domain names were registered shortly
before the merger was announced was found to support a finding of bad
faith on the part of the Respondent.77 In DELL INC. (戴尔有限公司) v. 上
海棵秀信息科技有限公司 and 沈建 (ADNDRC Case No. HK-2101528, 18
October 2021), one of the disputed domain names <dell-alienware.top>
incorporated “DELL” and “ALIENWARE” in their entirety, which were two
trademarks owned by the Complainant. The panelist was of the view that
the incorporation of both trademarks could mislead website visitors to
believe that the disputed domain name was owned by the Complainant.
4.1.1 (e) Typosquatting
143. Typosquatting is defined as the intentional misspelling of words with the

intent to intercept and siphon off traffic from its intended destination. When

77 See also Dell Inc. v. Zhang Guojie (ADNDRC Case No. HK-1600924, 29 December 2016), where a similar holding was
issued by the panel.
48
it is clear that the registration of a domain name involves typosquatting, the
intent to take advantage of the trademark is implied. However, typosquatting
is not always self-evident. Sometimes, words with minor lexical variations
are considered distinctive in their own right.78 A typical example is 希捷科技
有限公司 (SEAGATE TECHNOLOGY LLC) v. 廖敏 (ADNDRC Case No. HK-
2101462, 23 June 2021). The disputed domain name was <seagatg.com>.
The panelist was convinced that the Complainant’s trademark “SEAGATE”
was a prominent brand name. Although the disputed domain name was
“seagatg” instead of “seagate”, the panelist ruled that this was an act of
typosquatting as visually and phonetically “seagatg” and “seagate” were
confusingly similar, and the disputed domain name could easily confuse
customers of the Complainant.
4.1.2 Demonstrating Complainant’s rights in trademark or service mark
144. The second part of paragraph 4(a)(i) of the UDRP requires Complainant to
demonstrate that it has some “rights” in the allegedly infringed trademark
or service mark. Usually, the trademark owner, licensee or assignee are
considered to have the necessary “rights” to initiate a proceeding.
4.1.2 (a) Complainant’s Civil Rights or Interests
145. The fact that a trademark is not registered or the Complainant has no
presence in the Respondent’s country of residence does not defeat the
Complainant’s right to bring a UDRP proceeding. Although it may be a factor
in determining whether the Respondent registered the domain name in
bad faith.79 For example, under traditional UDRP jurisprudence, American
trademark applicants can even reserve a trademark by filing an “intent to use”
application because the application itself is considered a form of trademark
right in the United States.80 In some cases, further evidence may be required
to satisfy the “prior use” doctrine in order to show that unregistered marks
have recognition in the marketplace and to show proof of a second meaning.
That being said, in UDRP cases, proof of registration of trademarks similar to
that of the domain name and registered trademarks in multiple jurisdictions
has high persuasive value. This has impacted HKIAC jurisprudence. Where a
common law trademark requirement is satisfied, it releases the Complainant
from the further burden of proving its rights or legitimate interests.
146. In Taylor Vinters Via LLC v. qd (ADNDRC Case No. HK-1901243, 12
78 See Novalash Inc. v. Novolash Cosmetics China (HKIAC Case No. DCN-1500616, 27 April 2015).
79 Gerald M. Levine, Domain Name Arbitration (2nd Edition, Legal Corner Press, LLC, 2019), at 149-150.
49
June 2019), the Complainant was a Singapore-based law firm and part of
the international law firm Taylor Vinters. The disputed domain name was
<taylovrintersvia.com>. Although the Complainant did not possess any
registered trademark rights to the mark “TAYLORVINTERSVIA”, the panelist
was satisfied with the relevant evidence submitted by the Complainant that
it possessed unregistered trademark rights. The panelist was of the view
that the unregistered mark was a combination of the Complainant’s partner
UK firm named Taylor Vinters and the Complainant’s former name which
was Via Law Corporation. As such, the panelist ruled that the disputed
domain name was confusingly similar to the Complainant’s mark.
147. By contrast Article 8 of the CNDRP requires that the Complainant has “civil
rights or interests” in its name or mark. An unregistered trademark generally
falls short of the necessary proof in “.cn” cases.81 In Pacific Alliance
Investment Management (Hong Kong) Limited v. Xie Cheng Huo (HKIAC
Case No. DCN-1000406, 28 July 2010), the Complainant was a Hong Kong
company that had no business presence or registered trademark in the
PRC. The panel held that the Complainant did not have the civil rights as
required by the CNDRP.
148. HKDRP requires that the trademark itself is in some ways known in Hong
Kong, either through trademark registration in Hong Kong or the common
law “prior use” principles.82
149. Sometimes HKIAC panelists require the Complainant’s trademarks to be
registered in accordance with the Trademark Classification List of Goods
and Services in the PRC in “.cn” cases. In The Association of Chartered
Certified Accounts v. Wu Wei (HKIAC Case No. DCN-1000391, 21 May
2010), although the Complainant had registered an “ACCA” graphic
trademark in China, the Respondent had been assigned separately as a
legitimate “ACCA” trademark owner in another class, and the website had
been used to market products that were in the same class as the assigned
trademark. Therefore, the Complainant’s claim was rejected.
150. In Novalash Inc. v. Novolash Cosmetics China (HKIAC Case No. DCN-
1500616, 27 April 2015), the Texas incorporated company Novalash Inc.
filed a complaint against a Chinese cosmetic incorporation specialising in
providing eyelash extension services for its use of the domain name <www.
novolash.cn>. Business franchises of the Complainant were present in more
than 40 jurisdictions, where they operated beauty clinics and provided
81 See Google Inc. v. Zhou Xiaolan, (ADNDRC Case No. CN-1000329, 13 April 2010) (CIETAC).
82 See e.g. Shenzhen Da-Jiang Innovation Technology Company v.Trippro Trading Company (HKIAC Case No. DHK-
1600128, 30 March 2016), Television Broadcasts Limited v. Samuel Chan (HKIAC Case No. DHK-1500126, 19
January 2016).
50
training to local staff on their patented eyelash extension technologies.
The Complainant had been awarded numerous honours including America
Spa Professional’s Choice Awards and Beauty Launchpad Reader’s Choice.
It registered <www.novolash.com> on 1 March 2005 and since then
maintained it as the business’ official website. However, the Complainant
had never registered a trademark in Mainland China, and the Respondent
registered the “NOVOLASH” trademark in Mainland China in 2013, a
few days after the Respondent’s businesses came into the existence. The
panel was of the view that the Complainant had no recognised civil right in
Mainland China in relation to the disputed domain name and therefore did
not have a standing in this case.
151. In New U Life Corporation v. Kani Liao (HKIAC Case No. DHK-2000173,
25 November 2022), the Complainant’s claim was rejected as the panelist
ruled that the Complainant failed to establish its registered trademark and
trade name rights or its unregistered or common law trademark rights
in Hong Kong. The disputed domain name was <newulife.hk> and the
Complainant had registered the “New U Life” as trademarks in the US.
However, the Complainant did not possess a trademark or service mark in
Hong Kong. With respect to unregistered or common law trademark rights
in Hong Kong, the Complainant failed to show that its “New U Life” mark
had become a distinctive identifier which consumers in Hong Kong would
associate with the Complainant’s products. The panelist found no relevant
evidence in the complaint that showed any distribution or marketing of the
Complainant’s products in Hong Kong. Also, the panelist was of the view
that the Complainant’s assertion that its “New U Life” brand had obtained
a high level of fame in the market and could be recognised by the relevant
consumers in Hong Kong was not supported by the evidence submitted
including the fact that the Complainant had only entered the Hong Kong
market for a short period of time. As such, the panelist ruled that the
Complainant had not discharged its burden of proof with respect to the
requirement of paragraph 4(a)(i) of the HKDRP.
4.1.2 (b) Unregistered Trademarks/Trade Names
152. Unregistered trade names that are commonly associated with the
Complainant’s businesses are usually recognised while trade names
composed of generic terms or descriptive terms that could be suitable for
many different kinds of businesses may fail to qualify for such recognition.83
In Chiu Tsen Hu v. Andy Rose (ADNDRC Case No. HK-1500719, 16 April
2015), the Complainant was an IT consulting company that ran various
51
trading businesses, including selling domain names on its e-commerce
platform <www.608.com>. The Complainant had not registered the
trade name associated with the domain name <www.608.com>, but had
been using it continuously in relation to its business. The panel decided
that registration of a trademark was not a prerequisite in domain name
disputes. Since there was sufficient proof that the disputed domain name
was originally owned by the Complainant and had been used as a trade
name for promoting his business, the panel allowed the case to proceed.
4.2 Second Element: Respondent has No Rights or Legitimate

Interests in Respect of the Domain Name
153. For the second element under paragraph 4(a)(ii) of the UDRP to be satisfied
it must be demonstrated that the Respondent does not have any rights or
legitimate interests in respect of the domain name. The Respondent may
defend its position by demonstrating that it has either rights or legitimate
interests in the domain name in accordance with paragraph 4(c) of the
UDRP. Some enumerated circumstances in the UDRP have helped to clarify
what rights or legitimate interests the domain name holder can establish:
(i) a domain name has been used in connection with a bona fide offering
of goods or services; (ii) an individual or business or other organisation
has been commonly known by the domain name; or (iii) the Respondent is
making a legitimate non-commercial or fair use of the domain name without
intent to mislead consumers or to tarnish the Complainant’s trademark.
154. The disjunctive “or” underlines a distinction between “right” and “legitimate
interests”. Usually, a legal right arises because the Respondent is the senior
user of the disputed term that independently qualifies as a trademark, or
because the domain name registration precedes trademark acquisition.84
A legitimate interest is something less than the legal right, and is usually
conditional on continued use of the domain name in dispute.85 However,
a mere showing of the Respondent’s registration of other related domain
names will not give rise to rights or legitimate interests.86
4.2.1 Independently Acquired Trademark
155. Usually, when a domain name is registered before the trademark is

registered, the domain name holder has a right in the domain name. On
86 See e.g., Sichuan Chaofan Intellectual Property Intellectual Property Company v. Liu Defeng (ADNDRC Case No.
HK-1700962, 7 June 2017), compliant rejected.
52
the other hand, if a domain name is registered later than the trademark,
the Respondent’s legal rights or interests only arise when the Respondent
is the senior user of the disputed domain name that independently
qualifies as a “trademark”. However, the burden of proof is shared and
the Complainants initiating a proceeding must prove that they have a
right to maintain the proceeding by disputing the Respondents’ rights or
legitimate interests. Establishing a registered trademark only does not in
and of itself automatically discharge the Complainant’s burden of proof
under paragraph 4(a)(ii) of the UDRP.
156. In KHL Printing Co Pte. Ltd. & Asian Geographic Magazines Pte Ltd. v.
Chong Seat Au (ADNDRC Case No. HK-1400569, 5 April 2014), the second
Complainant, Asian Geographic Magazines Pte. Ltd., was a subsidiary of
the first Complainant, and it held an exhibition under the service mark
“Asia Dive Expo” based on a licensing agreement. The first Complainant
KHL Printing Co Pte. Ltd. registered the trademark “Asia Dive Expo” in
Singapore in 2006. The Respondent in this case first registered the disputed
domain name <www.asiadiveexpo.com> in 2002, which preceded the date
that the trademark wasregistered. In addition, the website that the disputed
domain name resolved to had been used to advertise exhibition events for
diving related activities in Singapore and China since its registration was
regularly updated. The panel stated that “the mere fact that a trademark
had been obtained by a Complainant was not an absolute right accruing
to a Complainant to succeed under the UDRP”. The panel rejected the
Complainant’s claim. In Merck Sharp & Dohme Corp v. Huang Zhong
and Merck Sharp & Dohme (Wuhan) Health Co. Ltd. (ADNDRC Case No.
HK-1400661, 21 December 2014), the panel decided that although the
American medical corporation Merck Sharp & Dohme Corp had registered
and had an established global reputation in its “MSD” trademark, the
Respondent Merck Sharp & Dohme (Wuhan) Health Co. Ltd. was an
existing entity and was known in Mainland China for producing Chinese
synthetic drugs and other health care products. Therefore, it was held that
the Complainant failed to prove that the Respondent had no legitimate
right in its registered <www.msdwh.com> domain name.
157. Possessing a trademark based on the domain name does not always help
the Respondents to establish their rights or legitimate interests. In Universal
City Studios LLC v. Zhang Yu (ADNDRC Case No. HK-1400582, 22 April
2014), the Respondent registered the Chinese character trademark of Beijing
Universal Studios (北京环球国际影视工作室) after registering the disputed
domain name <www.beijinguniversalstudios.com> in 2013. Nonetheless,
the panel in this case was not persuaded that the Respondent had rights or
legitimate interests in the domain name because (i) the Chinese trademark
53
was registered after the Respondent obtained the disputed domain name;
and (ii) the commercial value associated with the disputed domain name
was not related to the Respondent’s continued business operations and
was mostly derived from the Complainant’s international brand reputation.
4.2.2 Previous Business Relationships
158. A legitimate interest by the original registrant is an interest acquired over time
by the legitimate use of the domain name, which typically arises from the use
of the domain name through authorisation or prior permissive use. Where the
Complainant’s own actions created circumstances in which the Respondent
could reasonably conclude its conduct was permitted, it would be difficult
to find a violation of domain name policies. Contractual terms that expressly
permit a Respondent to use an owner’s trademark and provide for its return
upon termination of services are conclusive in respect of a Respondent’s
claim of good faith registration. Upon termination of the agreement,
voluntary transfer of the disputed domain name to a Complainant is most
likely where the Complainant’s contract expressly prohibits a Respondent
from using the trademark in any domain name without the Complainant’s
permission. However, once an agreement is terminated, subsequent
registration of a domain name incorporating the Complainant’s trademark is
usually considered fraud, or at least conclusive in showing bad faith.87
159. In Chris Duane v. Rob Gray (ADNDRC Case No. HK-1400671, 27 January
2015), the Complainant’s claim was dismissed based on a lack of clarity in
the business relationship between the parties. Although the Complainant
was able to show that it had registered the trademark “Silver Bullet Shiver
Shield” in the United States and possessed a possible claim of common law
trademark through usage, there was a disagreement between the parties
as to the nature of their business relationship. According to the panel, the
DNDR proceeding was a forum for clear-cut cases of cybersquatting and
not a forum to resolve complicated intellectual property matters involving
a full presentation of both parties’ conflicting evidence. The parties in
this case had prior legal matters that needed to be resolved which were
beyond the scope of the UDRP. Based on that, the panel dismissed the
Complainant’s claim.
160. In 美国家得路商标有限公司v. CATALO NATURAL PRODUCTS INC
(ADNDRC Case No. HK- 1801071, 2 April 2018), the Complainant claimed
that the Respondent was authorised to distribute the Complainant’s product,
and registered and used the disputed domain name. However, after the
54
business relationship was terminated the Respondent no longer had any
authority to use the relevant trademark or any word or domain name that
was confusingly similar to it. Moreover, the Respondent entity was dissolved
thus it had no legitimate reason for using the disputed domain name, nor
did it have any legitimate rights and interests in the domain name. The
panelist was of the view that the Complainant had made a prima facie claim
regarding the second element and the burden of proof was shifted to the
Respondent. Given that the Respondent failed to participate thus failed to
prove it has rights or legitimate interest in the disputed domain name, the
Complainant satisfied the second element.88
4.3 Third element: Domain Name Has Been Registered and Is

Being Used in Bad Faith
161. It is generally agreed that lack of rights or legitimate interests in the domain
name is insufficient to establish bad faith. Bad faith rests on the proof of past
and present intentional or wilful acts by the Respondent in violation of the
Complainant’s trademark rights. In DNDR proceedings, the Complainant
has the burden to prove a prima facie claim of bad faith, and prevails only
on proof that the Respondent has both registered and is using the domain
name in bad faith.
162. The registration time of the domain name is of great importance in establishing
bad faith. It is generally agreed that if the Respondent registered the
disputed domain name before the registration of the trademark owned by
the Complainant, the Respondent may not be deemed to have registered the
domain name in bad faith. However, in certain limited circumstances where
the facts of the case establish that the Respondent’s intent in registering
the domain name was to unfairly capitalise on the Complainant’s nascent
(typically as yet unregistered) trademark rights, panels have been prepared
to find that the Respondent has acted in bad faith. Such scenarios include
registration of a domain name: (i) shortly before or after the announcement
of a corporate merger; (ii) further to the Respondent’s insider knowledge
(e.g., a former employee); (iii) further to significant media attention (e.g., in
connection with a product launch or prominent event); or (iv) following the
Complainant’s filing of a trademark application.89
163. Bad faith registration is harder to prove than bad faith use. The consensus
is that domain name registration predating the trademark acquisition
negates intent to take advantage of Complainant’s trademark. The second
88 However, the Complainant failed on the third element as such the domain name was not transferred.
89 WIPO Jurisprudential Overview 3.0 section 3.8.2.
55
conjunctive requirement implies a present use. As a general rule, the use
of the domain name is considered first, except in those instances where
the domain name was registered prior to the Complainant acquiring its
trademark. If the use to which the Respondent has put the domain name at
any time infringed the Complainant’s rights, there is a stronger probability
that the Respondent had intended to mislead internet users from the
date of registration.90 For example, in Shenzhen Hongfeng Century
Technology Co. Ltd. v. Viofo Ltd. (ADNDRC Case No. HK-1700973,
12 July 2017), the Complainant registered its trademark “SJCAM” on 15
May 2015, and the Respondent registered its domain name <www.sjcam.
com> on 11 December 2013. The panel was of the view that “where a
Respondent registers a domain name before a trademark, a panelist will
not normally find bad faith on the part of the Respondent”. However,
the panel also stated, “in certain circumstances where the Respondent’s
intent in registering the domain name was to unfairly impinge on the
Complainant’s unregistered trademark rights, panels have in previous
cases found the existence of bad faith on the part of the Respondent.” In
this case, the panel was not satisfied with the Complainant’s proof that the
“SJCAM” trademark was well known before the date of the registration of
the disputed domain name <www.sjcam.com>, and therefore dismissed
the claim because the Complainant failed to establish that the disputed
domain name was registered in bad faith.
164. Paragraph 4(b) of the UDRP provides circumstances out of which an
inference of bad faith registration or use can be made. These circumstances
include, but are not limited to: (i) circumstances indicating that an entity
has registered or acquired the domain name primarily for the purpose of
selling, renting or otherwise transferring the domain name registration to
the owner of the trademark or service mark; (ii) an entity registered the
domain name in order to prevent the owner from reflecting the mark in a
corresponding domain name; (iii) an entity registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) an entity intentionally attempted to attract, for commercial gain,
internet users to its website by creating a likelihood of confusion with the
Complainant’s mark. At the same time, it is not Respondent’s burden to
prove that it registered and is using the domain name in good faith, but
it is a good opportunity to refute the Complainant’s claim in its response.
Some evidence which an innocent Respondent might find useful includes
the timing of a Complainant’s trademark registration/acquisition being later
than the domain name registration; its own proper conduct or acts; and the
manner in which the domain name or its linked website is used.
56
4.3.1 Renewal, Re-registration and Transfer
165. The time of registration is crucial in determining bad faith. Usually the
critical date for determining whether a domain name has been registered
in bad faith is the original date of registration. The general consensus is
that a renewal of registration represents a continuation of registration, and
does not restart the registrant’s representation and warranty covenants.91
However, the transfer of the domain name to subsequent holders, which
usually involves direct sales or auction of a domain name on the secondary
market, has been considered as a new registration. In Beijing Suning
Shangpin Appliance Co. Ltd. v. Eryue (ADNDRC Case No. HK-1500764,
17 September 2015), the panel stated that even if the predecessor had
previously used the domain name in good faith, this good faith could not
be carried over to cover acts of the subsequent domain name purchaser.
166. Sometimes, a transfer occurs between commonly controlled persons, or
the “strawman” identity of the same person. A transfer between commonly
controlled entities is usually not considered a new registration. In Airbnb
Inc. v. Guo Lanzhi (HKIAC Case No. DCN-1700742, 3 July 2017), the
Respondent argued in its response that while the WHOIS record suggested
that a transfer had occurred between parties, the transferor Yang Hongjuan
and the transferee Guo Lanzhi were two different web names used by the
same person. Therefore, a transfer between Yang Hongjuan and Guo Lanzhi
should not be considered a transfer that could reset the registration date.
The argument was not accepted by the panel because based on prima
facie evidence submitted by the parties, the two different names did not
seem to represent an existing commonly controlled entity.
4.3.2 Complainant’s Reputation
167. Bad faith usually requires the registrant to have actual knowledge of the
Complainant and its trademark, which implies a form of opportunism
embraced by the cybersquatting communities. Therefore, for well-known and
famous trademarks, bad faith is most often assumed.92 In UDRP jurisprudence,
panelists have generally rejected arguments that the Respondents’
registrations are protected under the “first come first served” doctrine, which
only applies where the Respondent’s evidence supports a priority of right and
refutes bad faith registration regardless of whether it lacks legitimate use, i.e.,
when the Respondent derives revenue potential or commercial value directly
from its domain name rather than the Complainant’s trademark.

57
168. In PCCW-HKT DataCom Services Limited v. bank pccw/pccwbank
(ADNDRC Case No. Hk-2201595, 30 March 2022), the panelist held that the
Respondent registered the disputed domain name having knowledge of the
Complainant’s rights and interests in the trademark. The Complainant had
registered its trademark many years ago and it had become widely known
amongst internet users, the public in the relevant sectors and various regions.
In addition, the Complainant’s trademarks had been registered in Hong
Kong where the Respondent had its registered address. The panel held that
all these circumstances constituted bad faith on the part of the Respondent.
169. In EventXtra Limited v. Nick van der Meij /EventX B.V. (ADNDRC
Case No. HK-2101525, 7 October 2021) the panel found that while the
Complainant’s trademark appeared to be fairly well-known, the registration
of the disputed domain name by the Respondent pre-dated the first
registration of the trademark by almost three years. There was insufficient
evidence to show that the trademark had been continuously used by the
Complainant prior to registration to adequately show that the Complainant
had unregistered or common law rights in the trademark. Furthermore,
the Complainant’s business appeared to be focused on Asia whereas the
Respondent’s business appeared to be operating in Europe. Therefore,
the panel found that it was unlikely that the Respondent would have been
aware of the Complainant’s business when registering the disputed domain
name. The panel held that the Respondent had not registered and been
using the disputed domain name in bad faith.
4.3.3 Website Content Probative of Knowledge
170. Usually, bad faith will not be inferred from a domain name legitimately used
in the past and present. An entity properly holding a domain name for its
appropriate commercial use is usually sufficient to avoid a finding of bad
faith. Disclaimers on websites which are commonly used in this region do
not usually settle the question of good faith. In most instances they tend
to underline the Respondent’s bad faith where their domain names resolve
to websites whose content is inconsistent with its profession of good faith.
4.3.4 Passive Holding (Lacking in Active Use)
171. Infringement may be inferred where the Respondent passively holds a domain
name registered after the Complainant’s acquisition of rights and offers it to
the Complainant at a price in excess of its out-of-pocket costs. Passive use
is itself a category distinct from legitimate inactivity in the UDRP vocabulary.
While mere failure to maintain an active website at a domain name does not
automatically result in a finding of bad faith, passive holding over a period of
58
time is usually evidence of illegitimate use. In Telstra Corporation Limited
v. Nuclear Marshmallows,93 the panel formulated a famous five-part test
to determine whether passive holding of a domain name proves bad faith,
which has generally been followed by HKIAC panelists.
4.3.5 Fraudulent Transfers
172. HKIAC jurisprudence shows that it is not uncommon to lose a domain name
through a registrar being hacked. This usually happens when a domain name
formerly registered in Complainant’s name is later found to be in another’s
hands. Acquiring a domain name through hacking is conclusive of bad faith. In
a 2013 case Teenee Media Company Limited v. Linda C.Austin (ADNDRC
Case No. HK-1300566, 14 March 2014), the Complainant registered the
disputed domain name <www.teenee.com> in 2001 and had never transferred
it. However, in 2013 the disputed domain name was illegally transferred into
the name of the Respondent, who had no rights or legitimate interests in the
disputed domain name. The panel ruled in favour of the Complainant.
173. In Dracco Company Limited v. Whoisguard (ADNDRC Case No. HK-
1400580, 15 April 2014), Complainant was the registered proprietor of
the trademark “Angelove” and registered the disputed domain <www.
angelove.com>. However, the domain name was later illegally removed
from the registry of GoDaddy by hackers. It was contended that the
Respondent in this case then improperly registered the aforesaid domain
name. Bad faith was found in this case and the panel decided that the
domain name should be transferred to the Complainant.
174. In王波 v. peter dy (ADNDRC Case No. HK- 2101558, 25 November 2021),
the Complainant alleged that it owned the domain name and that it was
stolen in June 2021. The registrar stated that on 4 June 2021, without the
authorisation of the Complainant, the disputed domain name was illegally
transferred to another registrar. The Respondent was unable to provide any
reliable evidence to prove that it was purchased from the Complainant, or
that the domain name was purchased in good faith, i.e., purchased without
knowledge of the relevant trade name.
4.3.6 Concealment of Ownership
175. Concealing an owner’s registration by registering through privacy or proxy

services is not in itself recognised as evidence of bad faith.94 It is common that
93 Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO 19 February 2000).

59
the true identity of the registrant is not disclosed. HKIAC only accepts the
Respondent’s identity as shown in the registrar’s registration document. In
NBA Properties Inc. v. Adam Zhang (ADNDRC Case No. HK-1700944, 2
March 2017), although the Respondent argued that the beneficial owner
and the Respondent in this case were not the same entity, the panel was of
the view that the Respondent did not have to have actual notice of the NBA
trademark before registering the disputed domain name. The reputation
of the “NBA” trademark is notorious and the Respondent “knew or should
have known of” the existence of the NBA trademark. Nevertheless, there
was no need to deal with the relationship of the alleged beneficial owner
and the Respondent in this case as responses were properly filed.
176. However, in the circumstances where the Respondent’s use of proxy/privacy
registration services is linked with other facts, including but not limited
to, failing to respond to the proceedings or providing false registration
information to the Registrar, the panelists may view such shield as an
indication that the Respondent wanted to hide the identity and register
and use the disputed domain name in bad faith. Please see Television
Broadcasts Limited v. Domain Administrator (ADNDRC Case No. HK-
2001413, 4 February 2021); Bandai Spirits Co., Ltd. V. Domain Admin/
Domain Privacy Guard Sociedad Anónima Ltd. (ADNDRC Case No. HK-
2001357, July 14 2020).
4.3.7 High–Volume Registrants
177. High-volume registrants are commonly seen in HKIAC cases. While neither
the WIPO Final Report nor the ICANN report implementing the UDRP
distinguishes different classes of registrants, panelists in this region are
accustomed to finding bad faith for Respondents that are engaging in
the business of acquiring, monetising and selling domain names (known
as domain name investors). Such a finding, may well support a finding
that the Respondent is engaged in a pattern of conduct that deprives
trademark owners of the ability to register domain names reflecting their
marks. In HKIAC cases including Regeneron Pharmaceutical, Inc. v. Yu
Tao (ADNDRC Case No. HK-1700967, 19 June 2017), Deputy Synthes
Inc. & Synthes GmBH v. 王淑香 (HKIAC Case No. DCN-1700735, 22 May
2017), Corporation Service Company v. Wu Jie (HKIAC Case No. DCN-
1700728, 10 April 2017), voestalpine High Performance Metals Pacific
Pte. Ltd. v. 彭保方 (Pengbaofang) (ADNDRC Case No. HK-2001364, 17
August 2020), and many others, the Respondents’ multiple registrations
were considered to be indicative of bad faith.
60
4.3.8 Disrupting Business of Competitors
178. Paragraph 4(b)(iii) of the UDRP is directed at the Respondents who purchase
domain names primarily for the purpose of disrupting the business of a
competitor. The rule prescribes that unfair competition and deception
by a registrant appropriating another’s sign for its own business usually
constitute bad faith. In Village Road Show Theme Parks PTY Ltd v. Kang
Ma (ADNDRC Case No. HK-1700977, 10 July 2017), the Respondent
had in its website forged information in order to mislead consumers to
believe that the website belonged to the Complainant’s Wild Haikou
Water Park in Haikou, China. The panel agreed that the Respondent
registered the domain name in order to derive commercial revenues
from misleading consumers to purchase forged tickets from its website,
therefore disrupting the business of the Complainant. The panel decided
that the disputed domain name should be transferred to the Complainant.
In Television Broadcasts Limited v. Domain Administrator (ADNDRC
Case No. HK-2001413, 4 February 2021), in the panelist’s view the fact
that the Respondent’s website featured the Complainant’s trademarks and
offered competing services showed that the Respondent was well aware
of the Complainant and its trademarks, as well as its reputation in the
television and broadcasting industry. The panel was strongly persuaded
by the evidence submitted that the Respondent had specifically targeted
the Complainant with a view to mislead and confuse unsuspecting Internet
users, or to entice them to its website for commercial gain. The panel
therefore held that the circumstances described in paragraph 4(b)(iv) of
the UDRP had been established. The panel concluded that the disputed
domain name was registered and being used in bad faith.
4.4 Other Legal Issues
4.4.1 The Effect of National Law
179. The UDRP does not preclude panelists from applying national laws, in
particular paragraph 15(a) of the UDRP Rules stipulates that a panel
shall decide a complaint on the basis of the statements and documents
submitted and in accordance with the UDRP, the UDRP Rules and any rules
and principles of law that it deems applicable. However, there is general
consensus that under the UDRP system, decision makers do not resort to
the national laws of a particular jurisdiction.95 Panels have broadly noted
95 Holger Hestermeyer, ‘The Invalidity of ICANN’s UDRP Under National Law’ [2002] 3 Minnesota Intellectual Property
Review 1.
61
that the UDRP is designed to operate in a global context and that the
development of UDRP jurisprudence should not be dependent on any
national law principles.
180. In contrast to the UDRP, both the CNDRP and HKDRP are enacted to protect
domain names registered in specific regions. The current CNDRP states that
the laws and regulations of the PRC shall apply to matters not stipulated in
the CNDRP. Panelists generally agree that the interpretation of the CNDRP
should be consistent with PRC law and legal principles. In some cases,
HKIAC panelists have referred to relevant decisions made by PRC national
courts, although these decisions are not considered binding authorities.96
As such, national law has substantial effects on the CNDRP proceedings.
Apart from the PRC Copyright Law and the Anti-Unfair Competition Law
mentioned in Section 2.2.5 in relation to civil rights or interests in a name or
mark, panels could also apply other applicable laws such as the Trademark
Law of the PRC when deciding acts such as cybersquatting.
4.4.2 Cancellation ordered instead of transfer
181. Usually, the Complainant in its complaint form will ask the panel to transfer
the disputed domain name. In very limited circumstances, HKIAC panels
have ordered the registered domain name to be cancelled regardless
of the Complainant’s request to transfer the domain name. This usually
happens when the Complainant is able to establish that the registration of
the disputed domain name is abusive, but the panel is of the view that the
Complainant is not entitled to the disputed domain name. For example,
in Alibaba Group Holding Ltd. v. Lai Qi Xing (HKIAC Case No. DCN-
0900328, 17 June 2009), although the Complainant was able to show that
the disputed domain name <www.alibababank.com.cn> closely related to
its well-known “Alibaba” trademark, the panel ordered the cancellation of
the domain name because Alibaba Group Holding Ltd. was not at that
time engaged in any banking related business activities. In recent years,
HKIAC panels have rarely ordered the cancellation of a disputed domain
name instead of transferring it to a Complainant, unless the Complainant
has specifically sought cancellation of the disputed domain name.97
96 See Airbnb Inc. v. Guo Lanzhi (HKIAC Case No. DCN-1700742, 3 July 2017).
97 For examples of HKIAC panels that have ordered a disputed domain name to be cancelled, see e.g. Hugo Boss
v. Boss (Shenzhen) Company (HKIAC Case No. DCN-0600068, 26 August 2006), Educational Testing Services v.
Guangzhou Keyi Keji Fazhan Youxian Gongsi (HKIAC Case No. DCN-0600053, 23 July 2006) and 富扬有限公司
(RICH SOAR LIMITED), 新百丽鞋业（深圳）有限公司, 杰峰有限公司 (HERO PEAK LIMITED) & 思加圖鞋業有限
公司 (STACCATO FOOTWEAR CO., LTD) v. She Lao (ADNDRC Case No. HK-1300542, 19 November 2013).
62
4.4.3 Burden of Proof
182. The overall burden of proof in DNDR proceedings rests on the Complainant,
where the Complainant makes out a prima facie case on the UDRP elements.
The burden of proof shifts to the Respondent to come forward with relevant
evidence to address the claims advanced by the Complainant. For example,
under the UDRP, the Complainant must prove all three elements98 under
paragraph 4(a) of the UDRP before it can prevail and have a domain name
transferred or cancelled.
183. Usually, the Complainant’s burden of proof is considered to be similar to the
preponderance of evidence standard used in common law jurisdictions. If the
panel is satisfied with the Complainant’s prima facie case, the burden shifts to
the Respondent to rebut it. However, in domain name proceedings, even if
the Respondent is silent and the prima facie case has been established, it is
not conclusive against the Respondent that there is an abusive registration.
“The absence of good faith does not constitute bad faith.” For example, in
two related cases Wong To Yick Wood Lock Ointment Limited v. Chun Hoi
Cheung (ADNDRC Case No. HK-1600908, 30 November 2016) and Wong To
Yick v. Xie Jun Lian (ADNDRC Case No. HK-1600907, 26 December 2016), both
panels were of the view that the Complainant was not able to satisfy the burden
of proving the Respondent’s bad faith by only submitting a WHOIS search result,
the registration certification of the trademark “Wong To Yick” and the GoDaddy
registration documents, and therefore the panel dismissed the Complainant’s
claim. As decided by the panel, “none of these documents is able to establish
that the disputed domain name was registered and being used in bad faith.”
In the case EventXtra Limited v. Nick van der Meij /EventX B.V. (ADNDRC
Case No. HK-2101525, 7 October 2021), in the panel’s view, the Complainant
had established a prima facie case that the Respondent had a lack of rights or
legitimate interests in the disputed domain name. The burden of proof shifted
to the Respondent. As the Respondent had not submitted a response, the panel
assessed the case based on the reasonable inferences that could be drawn from
the Complainant’s evidence. The panel believed that the website to which the
disputed domain name resolved appeared to have been used in connection
with a bona fide offering of goods or services, even before the Complainant had
first acquired registered rights in relation to the relevant trademark. Therefore,
the panel found that the Respondent had rights or legitimate interests in the
disputed domain name and the complaint was denied.
98 The three elements are: (i) the domain name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights; (ii) the registrant of the domain name has no rights or legitimate interests in
respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.
63
Annexes
1. HKIAC Fee Schedules

The administrative fees for DNDR proceedings administered by HKIAC for UDRP,
CNDRP and HKDRP proceedings can be found below.
UDRP
Number Fee for Panelists Total Fees

of Domain Administrative
Names in Single Three Fee Single Three
Complaint panelist panelists panelist panelists
Presiding Panelist:
USD1,000
1 to 2 USD700 USD600 USD1,300 USD2,800
Each Co-Panelist:
USD600
Presiding Panelist:
USD1,200
3 to 5 USD900 USD700 USD1,600 USD3,300
Each Co-Panelist:
USD700
Presiding Panelist:
USD1,400
6 to 9 USD1,100 USD800 USD1,900 USD3,800
Each Co-Panelist:
USD800
10 or more (to be determined by the relevant office of the ADNDRC)
CNDRP
Number of
Administrative
Domain Names Panel Total Fees Fee for Panelist(s)
Fee
in Complaint
1 Single RMB8,000 RMB4,000 RMB4,000

panelist
2 to 5 RMB12,000 RMB6,000 RMB6,000
6 to 10 RMB16,000 RMB8,000 RMB8,000
More than 10 (to be determined by HKIAC)
64
CNDRP (continued)
Number of
Administrative
Domain Names Panel Total Fees Fee for Panelist(s)
Fee
in Complaint
Three Presiding
panelists Panelist:
RMB4,000
1 RMB14,000 RMB6,000 RMB8,000
Each
Co-Panelist:
RMB2,000
Presiding
Panelist:
RMB6,000
2 to 5 RMB20,000 RMB8,000 RMB12,000
Each
Co-Panelist:
RMB3,000
Presiding
Panelist:
RMB7,000
6 to 10 RMB24,000 RMB9,000 RMB15,000
Each
Co-Panelist:
RMB4,000
More than 10 (to be determined by HKIAC)
HKDRP
Number of
Administrative
Domain Names Panel Panelist Fees Total Fees
Fee
in Complaint
Single panelist HKD5,000 HKD5,000 HKD10,000

1
Three panelists HKD15,000 HKD5,000 HKD20,000
65
2. Procedural Flowcharts – Key DNDR Proceedings at HKIAC
Administrative Proceedings under the UDRP
Timeline Stage 1 Stage 2

(Days) Applicable Disputes Submit a complaint
Yes
using the complaint
• You believe that form and the
the domain name appropriate fee
registered by the
current owner
is identical or
confusingly similar Stage 3
The
to your trademark HKIAC reviews the
complainant
or service mark in complaint form
withdraws the
which you have for administrative
complaint
rights; and compliance
• You believe that No

the current owner No
has no rights or In compliance? Deficiencies
legitimate Interests
rectified in
in respect of the Yes
five calendar
domain name; and Yes
days?
5
• You believe Stage 4
that the domain (Commencement
name has been Date)
registered and is Notification of the
being used in bad commencement of
faith. the proceeding and
complaint form sent
to the respondent
Stage 5
See page 67
66
5
Stage 4
See page 66
20 calendar days to complete

response form failing which the panel
20 may determine the dispute based
upon the complaint and evidence Stage 5
submitted Respondent submits
the response form to
HKIAC
5 Five calendar days to appoint panel Stage 6

HKIAC appoints the
panel
14 calendar days to render a decision Stage 7

or the proceeding can be terminated Panel renders a
14 decision
based upon a settlement agreement
reached between the parties
Stage 8
HKIAC publishes
the decision on the
website and notifies
Three business days for HKIAC to the parties,
the registrar(s) and
10 submit the decision to the parties
ICANN
Seven calendar days for the panel to
make any corrections to the decision
on its own initiative or upon request
by a party
67
Administrative Proceedings under the CNDRP
Timeline Stage 1 Stage 2

(Days) Applicable Disputes Submit a complaint
Yes
using the complaint
• You believe that form and the
the domain name appropriate fee
registered by the
current owner
is identical or
The
to your name or HKIAC reviews the
complainant
mark in which you complaint form
withdraws the
have civil rights or for administrative
complaint
interests; and compliance

the current owner No
has no rights or In compliance? Deficiencies
rectified in
in respect of the Yes
five calendar
domain name; and Yes
days?
5
• You believe Stage 4
that the domain (Commencement
name has been Date)
registered and is Notification of the
being used in bad commencement of
faith. the proceeding and
complaint form sent
to respondent
Stage 5
See page 69
68
5
Stage 4
See page 68
20 calendar days to complete

upon the complaint and evidence Stage 5
HKIAC
5 Five calendar days to appoint panel Stage 6

HKIAC appoints the
panel
14 calendar days to render a decision Stage 7

14 decision
Stage 8
HKIAC publishes
the decision on the
Three business days for HKIAC to the parties,
the registrar(s) and
10 submit the decision to the parties
ICANN
Seven calendar days for the panel to
make any corrections to the decision
by a party
69
Administrative Proceedings under the HKDRP
Timeline
Stage 1 Stage 2
(Business
Applicable Disputes Submit a complaint
Days) Yes
using complaint form
• You believe that and the appropriate
the domain name fee
registered by the
current owner
is identical or
to your trademark The
HKIAC reviews
or service mark complainant
complaint form
in Hong Kong in withdraws the
for administrative
which you have complaint
compliance
rights; and

the current owner
No
has no rights or
In compliance? Deficiencies
in respect of the rectified in
Yes
domain name; and 5 business
Yes
days?
5 • You believe
Stage 4
that the domain
(Commencement
name has been
Date)
registered and is
being used in bad Notification of
faith. commencement of
the proceeding and
• If the domain name complaint form sent
is registered by an to respondent
individual person,
you believe that
the current owner
does not meet Stage 5
the registration See page 71
requirements for
that individual
category of the
domain name.
70
5
Stage 4
See page 70
15 business days to complete

on the complaint and evidence Stage 5
HKIAC
5 Five business days to appoint the Stage 6

panel HKIAC appoints the
panel
15 business days to render a decision Stage 7

15 decision
Stage 8
HKIAC publishes
the decision on the
Three business days for HKIAC to
the parties, the
issue the decision to the parties
registrar(s) and
10
HKIRC
Seven business days for the panel to
make any corrections of the decision
by a party
71
Acknowledgements
HKIAC expresses its gratitude and appreciation to the following individuals for
their valuable contributions in the preparation of the 2nd Edition (2022) of this
Guide:
Ms. Sarah Grimmer

Ms. Kiran Sanghera
Mr. Tom Leung
Ms. Chun Wu
Mr. Johnson Chan
72
For further information relating to dispute resolution in Hong Kong,
please contact:
The Secretary-General
Hong Kong International Arbitration Centre
38th Floor Two Exchange Square
8 Connaught Place Hong Kong
Tel: (852) 2525 2381 | Fax: (852) 2524 2171

E-mail: adr@hkiac.org | www.hkiac.org
74

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2nd Edition

1. …Introduction to Domain Name Dispute Resolution..................................9

2. …Domain Name Dispute Resolution Services at HKIAC...........................10

3.… Selected Procedural Issues....................................................................29

4. …Selected Legal Issues.............................................................................43

ACDR Arab Center for Dispute Resolution

ADNDRC Asian Domain Name Dispute Resolution Centre

AIAC Asian International Arbitration Centre

CAC Czech Arbitration Court Arbitration Centre for Internet Disputes

ccTLDs Country-code Top-level Domain Names

CEDRP Charter Eligibility Dispute Resolution Policies

CIETAC China International Economic and Trade Arbitration Commission

CNDRP CNNIC Domain Name Dispute Resolution Policy

CNNIC China Internet Network Information Center

DNDR Domain Name Dispute Resolution

DNS Domain Name System

EDDP Expired Domain Deletion Policy

GDPR General Data Protection Regulation

gTLDs Generic Top-level Domain Names

HKAO Hong Kong Arbitration Ordinance

HKDRP Hong Kong Domain Name Dispute Resolution Policy

HKIAC Hong Kong International Arbitration Centre

HKIRC Hong Kong Internet Registration Corporation

ICANN Internet Corporation for Assigned Names and Numbers

OP3FT Organization for the Promotion, Protection and Progress of

PHDRP dotPH Uniform Dispute Resolution Policy

PRC People’s Republic of China

SDRP Sunrise Dispute Resolution Policies

TDRP Transfer Dispute Resolution Policy

TM-PDDRP Trademark Post-Delegation Dispute Resolution Procedure

TLD Top-level Domain

UDRP Uniform Domain Name Dispute Resolution Policy

UDRP-F Uniform Dispute Resolution Policy for Frogans Addresses

URS Uniform Rapid Suspension System

WIPO World Intellectual Property Organisation

2.1 Administrative Proceedings under UDRP

2.1.1 Filing a complaint

2.1.2 Filing a response

2.1.3 Appointing the panel

21. Under UDRP proceedings, parties can select a single-member panel or a

6 Paragraph 6(b) UDRP Rules.

2.1.4 Issuing and implementing the decision

25. The panel in a UDRP proceeding is required to render a decision within

8 Paragraph 6(b) UDRP Rules.

2.2 Administrative Proceedings under CNDRP

13 Paragraph 15(c) & (e) UDRP Rules.

2.2.1 Filing a complaint

2.2.2 Filing a response

2.2.3 Appointing the panel

2.2.5 Additional distinguishing features

2.3 Administrative Proceedings under HKDRP

2.3.1 Filing a complaint

23 Paragraph 11(a) UDRP Rules.

2.3.2 Filing a response

2.3.3 Appointing the panel

25 Article 5(2) HKDRP Supplemental Rules.

2.3.4 Issuing and implementing the decision

2.3.5 Additional distinguishing features

28 Paragraph 6(e) HKDRP Rules.

2.4 Other Domain Name Dispute Resolution Services Provided

31 Paragraph 4(a)(iv) HKDRP.

63. The TM-PDDRP is a rights protection mechanism designed to provide

68. The TDRP is applicable to disputes between two ICANN-accredited