Recently, the team led by Lily Fu, Senior Partner at NTD IP Attorneys (NTD) successfully represented a world-renowned bicycle brand in a domain name dispute administered by the Hong Kong International Arbitration Centre (HKIAC), securing the transfer of the disputed domain name to the client. The panel fully upheld the arguments presented by Attorney Fu’s team, ruling that: the disputed domain name is confusingly similar to the Complainant’s trademark; the Respondent had no legitimate rights or interests in the domain name or its distinctive part; and the Respondent had registered and used the domain name in bad faith.

Case Overview

The Complainant’s trademark has been registered and continuously used in mainland China since 2004, enjoying very high popularity and reputation. The distinctive part of the disputed domain name is highly similar to the Complainant’s registered trademark, and its registration date is later than the registration date of the Complainant’s trademark in China and the registration of the Complainant’s domain name. As a competitor in the same industry, the Respondent not only registered the domain name highly similar to the Complainant’s trademark, but also translated the Complainant’s English official website into Chinese to create its own site, falsely presenting it as the Complainant’s Chinese website. Additionally, the Respondent had proposed to sell the disputed domain name to the Complainant at a high price.

NTD’s Strategic Approach

The NTD team demonstrated exceptional expertise and extensive practical experience throughout the case. Key actions including:

Conducting a detailed analysis of the “Policy for .CN Domain Name Dispute Resolution” and the “UDRP Rules”;

Precisely demonstrating that the disputed domain name was confusingly similar to the Complainant’s trademark and that the Respondent had no legitimate rights or interests;

Systematically organizing evidence of the Complainant’s trademark registrations in China and globally, market reputation (including media coverage, event sponsorships, etc.), and the Respondent’s bad faith (e.g., the high-price sale offer, content of the imitation website);

Effectively refuting the Respondent’s defenses such as “transliteration differences” and “special character variations” from linguistic and consumer perception perspectives, supported by relevant precedents;

Efficiently coordinating all arbitration procedures, ensuring compliant submission of the complaint and supplementary briefs, and providing timely responses to panel inquiries to ensure smooth progress.

Case Significance

As a critical digital asset and commercial identifier, domain names carry significant brand value for rights holders. For legitimate owners, domain name complaints serve as an essential strategic tool for both defense and offense, which provides an efficient, economical, and global pathway to protect digital assets, defend brand value, safeguard business interests, and combat malicious cybersquatting and fraudulent activities online. Proactively monitoring domain name registrations related to brands and taking decisive action against infringements is a crucial aspect in modern intellectual property management and brand protection. This case highlights arbitration institutions’ strict stance against malicious cybersquatting, helping to deter free-riding and the unfair exploitation of others’ goodwill within the industry.

NTD IP Attorneys remains committed to providing efficient and precise intellectual property protection solutions for clients. Moving forward, NTD will continue to leverage its professional strengths to safeguard the brand development and digital assets of enterprises worldwide.

This case was represented by attorney Lily Fu and attorney Steve Liu at NTD IP Attorneys.

Lily Fu

Ms. Fu has been engaged in legal services such as intellectual property litigation, licensing and strategy consulting, commercial contract disputes, and corporate compliance since 2000 and has handled nearly 6,000 legal cases. She is insightful of the nature of business and adept at providing effective analysis and professional advice from the standpoint of client. Ms. Fu is of an active nature and fond of learning, innovative and strong-minded, and does not give up in the face of challenges and difficulties. She has represented many difficult and complex cases, and has obtained satisfactory results for clients and earned the respect of judges and fellow lawyers. As a team leader, Ms. Fu is willing to share her experience with young colleagues to inspire them to keep a pioneering spirit, blazing new trails. Passionate and committed to her mission, she is an active contributor in a number of industry organizations, providing expertise and support to the development of intellectual property laws and policies worldwide.

Steve Liu

Steve Liu graduated from Northwest University of Politics and Law, and received advanced education in the United Kingdom and earned a LL.M. degree in International Business Law from the Newcastle University Law School. In 2018 Steve Liu joined NTD after graduation for law work in IP field. Steve Liu focuses on intellectual property affirmation, authorization and infringement litigation, anti-unfair competition law compliance and litigation, advertising compliance and consumer rights protection compliance advice, draft and review of civil contract, arbitration and litigation of civil disputes. He has assisted several senior partners to deal with various kinds of legal services for well-known domestic and foreign enterprises, such as IP infringement disputes, IP authorization and confirmation disputes, administrative anti-counterfeiting actions, online infringement complaints, IP assignment and licensing, commercial disputes of enterprises, and enterprise general legal counsel.