Source: IPR Daily
Authors: Lester Li, Deking Cai
I. Case Background
In the Internet business world, a domain name is a core asset for a company's online brand. It's not only a display window for the company's image but also a crucial entry point for attracting traffic and expanding the market. Recently, Chang Tsi & Partner represented SHEIN in initiating domain name dispute resolution against thedomain name, engaging in a battle of wits and perseverance against overseas experienced lawyers, and ultimately securing the ownership of thedomain name for the client.
SHEIN is a global online retailer of fashion and lifestyle products. Its namesake brand "SHEIN," with an innovative customer-driven model, more accurately and effectively meets customer preferences, offers more affordable prices, and reduces waste. The brand continues to evolve to satisfy the diverse needs of consumers. SHEIN's business spans the globe, with significant influence and brand reputation in over 150 countries and regions, including the US, Europe, the Middle East, Southeast Asia, and Africa.
However, commercial success often comes with challenges and crises. SHEIN noticed thedomain name (hereinafter referred to as the "disputed domain name"), which is very similar to its official domain name, with only a slight adjustment in the order of the letters "i" and "e." This subtle spelling difference can easily lead consumers to mistakenly enter, potentially damaging SHEIN's brand image and commercial interests. Moreover, when we received SHEIN's consultation, the landing page of the domain name displayed multiple advertisements related to SHEIN (linking to websites of third-party competing brands). This made us realize that a tough battle for brand protection and domain rights was inevitable. Through analyzing the registration information and usage of the domain name, we finally recommended resolving the issue through a domain name dispute resolution.
Domain name dispute resolution is a quick and cost-effective method for resolving domain name disputes, where the complainant can request the cancellation of the disputed domain name or its transfer to themselves. Due to the wide variety of domain names, the arbitration system is complex, mainly divided into top-level domains and country-code top-level domains. In this case, the disputed domain <.com> is governed by the "Uniform Domain Name Dispute Resolution Policy" (UDRP). Within Asia, complaints can be filed with the corresponding arbitration centers in Beijing, Hong Kong, Kuala Lumpur, and Seoul. The complaint language defaults to the domain registration agreement language, which is English in this case. Based on our experience, we chose the Hong Kong International Arbitration Center (HKIAC) to handle this case.
II. Legal Battles and Strategic Maneuvers
The Chang Tsi team quickly reviewed SHEIN's prior rights and investigated the content of thedomain page. Relying on the UDRP, the team approached the case from three core aspects: "confusing similarity," "no legitimate rights or interests," and "malicious registration and use," systematically arguing the harm caused by the disputed domain name to the SHEIN brand.
In subsequent confrontations, the respondent, represented by a senior US lawyer, applied for an overdue defense on the grounds of "emails going into the spam folder," attempting to delay the process. The Chang Tsi team swiftly counterattacked, pointing out the flaws in their reasoning through technical analysis and citing similar cases to demonstrate that professional domain holders should possess email management capabilities. Then, the respondent raised an “entrapment" accusation, claiming that SHEIN had hijacked the disputed domain name through a third-party service provider and submitted so-called internal emails as evidence. The client clarified that SHEIN would never engage in improper acts like domain hijacking and had no cooperation with that service provider. In response, the Chang Tsi team dissected the issue from both formal and substantive levels: on one hand, the email records showed no involvement of the SHEIN entity, and the disputed domain name was not explicitly mentioned in the email content; on the other hand, technical verification indicated that the disputed domain name did not redirect to the SHEIN official website but continued to drive traffic to competing products, which was completely contrary to commercial logic. The panelist ultimately accepted our arguments, determining that the allegations lacked factual basis.
III. The Triumph: Domain Name Transferred to SHEIN
After three rounds of intense battles and strategic maneuvers, the panelist finally made a fair judgment by comprehensively reviewing the evidence and statements submitted by both parties, producing an 18-page award analyzing both sides' arguments one by one. It ultimately determined that thedomain name was confusingly similar to SHEIN's trademark, that the respondent had no legitimate rights or interests in the domain name, and that its registration and use were clearly malicious. The allegations of domain hijacking were dismissed, and the tribunal ruled to transfer thedomain name to SHEIN.
This victory in the domain name dispute not only eliminated potential hazards for SHEIN but also established a classic case regarding brand protection and domain rights in the internet business field. As a core asset of a company's online brand, domain names require constant vigilance, and we must use the law to defend legitimate rights and interests. In the face of a complex and changing business environment and legal challenges, wisdom, strategy, and perseverance are all essential. Chang Tsi will continue to stand at the forefront of brand protection, safeguarding the long-term development of enterprises.
Lester Li
Chang Tsi & Partners
Counsel | Attorney at Law | Trademark Agent
LesterLi@changtsi.com
+86 10 88369999
Lester Li is one of the principal leaders in domestic and international trademark, copyright and domain name area at Chang tsi & Partners. As the primary contact for high-profile clients including TikTok, Air China, OPPO, and Hikvision, he oversees client relations while also managing internal team guidance and operational execution. During his tenure at Chang tsi, Lester Li assisted TikTok in developing its global trademark portfolio strategy and successfully secured well-known trademark status for the company in jurisdictions such as the European Union and Turkey. He specializes in trademark negotiations, adept at identifying leverage points to maximize client advantages under constrained conditions. Additionally, Lester Li has extensive expertise in overseas domain name disputes and arbitration, having successfully facilitated multiple domain name transfers for clients in cross-border cases.
Deking Cai
Chang Tsi & Partners
Assistant
Trademark9@changtsi.com
+86 10 88369999
Source: IPR Daily
Authors: Lester Li, Deking Cai
