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Fight for your domain rights

Navigating your way around the maze of national domain name dispute resolution procedures can be tricky. But it is essential if you want to take on the cybersquatters - and win. Emma Barraclough introduces a survey of eight Asian jurisdictions which considers what rights owners need to know to reclaim their rights

If your trade mark has not yet been the target of cybersquatters or domain name tasters then consider yourself lucky: statistics suggest that it may only be a matter of time.

Cybersquatting is on the rise, according to figures from the World Intellectual Property Organization. WIPO received more complaints about cybersquatters in 2006 than in any of the previous five years. Last year 1,823 complaints alleging cybersquatting relating to generic top-level domains (gTLDs) and country code top-level domains (ccTLDs) were filed with the IP organization's Arbitration and Mediation Centre – a figure that excludes complaints handled by national dispute resolution bodies.

READ MORE: Let domain registries offset brands' enforcement costs: lawyers

Part of the reason for the growth is that more and more people are accessing the internet, and in Asia, use of the internet is soaring. In Korea, for example, more than 70% of the population regularly surfs the web, while the Chinese government's Internet Network Information Center says that more than 137 million people now use the internet in China, up 26 million on 2005. The number of domain names in China has also risen dramatically. There are now more than 1.8 million registered .cn domain names, a figure that has almost doubled since 2005.

But along with that rise comes risks. China now has the third highest number of alleged cybersquatters in domain name dispute resolution procedures, according to WIPO statistics. Respondents from South Korea and Australia also feature in WIPO's top 10 list. In addition, disputes involving domain names in local script are creating new headaches for IP owners.

To tackle these problems, IP owners with legitimate rights to trade marks and domain names need to make the most of dispute resolution processes. While many choose to use WIPO's Uniform Dispute Resolution Policy (UDRP), many countries offer a national domain name dispute resolution regime for country code top-level domains.

MIP invited practitioners in eight Asian jurisdictions – Australia, China, Hong Kong, India, Japan, Malaysia, New Zealand and South Korea – to answer a series of questions (see box) about the rules in their countries. Their answers, which follow on the next 11 pages, provide an invaluable guide to the ins and outs of domain name dispute resolution in Asia.

Questions on domain name disputes
How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?
Are there any requirements that an applicant must fulfil?
Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?
What requirements must a complainant fulfil in order to win a domain name dispute?
What kind of evidence should a complainant supply?
If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?
How much does it cost to file a domain name dispute? What advice do you have for complainants?
Have there been any key cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

AUSTRALIA

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

Australian domain names can only be registered/renewed for a period of two years. Registrars generally charge between A$30 ($25) and A$140 (retail) for a two-year registration/renewal.

Are there any requirements that an applicant must fulfil?

The .au Domain Administration Ltd (auDA) is an industry self-regulatory body that publishes policies that govern the .au country-level domain.

For the major commercial extensions (com.au and net.au) a registrant must satisfy two main eligibility criteria:

  • The registrant must have a connection with Australia (typically as a registered Australian commercial entity or the owner of a registered Australian trade mark/application).
  • There must be a connection between the domain name and the registrant. This typically requires that the domain name is either derived from the registrant's registered commercial name/trade mark or that there is otherwise a close and substantial connection between the domain name and the registrant.

The "close and substantial connection" rule generally applies where the domain name relates to a product/service that the applicant provides. However, there are other circumstances that will satisfy the rule, such as if the domain name relates to an event, activity, venue or profession associated with the registrant. The rule also permits so-called domain monetization but imposes further conditions of use on monetized domain names.

In addition to satisfying the eligibility criteria, registrants must comply with other auDA policies that might limit the way in which the registrant uses their Australian domain name. For example, there is a prohibition on selling Australian domain names but Australian domain names may be transferred in limited circumstances.

The auDA is considering changes to .au policy, including the possibility of opening up the top-level domain and reviewing the current prohibition on selling Australian domain names.

Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?

Non-judicial methods of challenging the registration and/or use of a domain name in the .au name space include the .au Dispute Resolution Policy (auDRP). This is based on the UDRP.

The auDRP applies to all open .au second level domain names (that is, com.au, net.au, org.au, asn.au and id.au) as well as the edu.au extension.

auDRP complaints may be lodged with any of the auDA approved dispute resolution service providers, which include WIPO, the Leading Edge Alternative Dispute Resolvers, the Chartered Institute of Arbitrators Australian Branch, and the Institute of Arbitrators & Mediators Australia.

Hearings are typically conducted by written submission.

There is no appeals process. A party not satisfied with a panel decision may initiate legal proceedings.

What requirements must a complainant fulfil to win a domain name dispute?

To succeed in an auDRP complaint, the complainant must show that:

  • the domain name is identical with or confusingly similar to a name, trade mark or service mark in which the complainant has rights; and
  • the registrant has no rights or legitimate interests in respect of the domain name; and
  • the domain name has been registered or is being used in bad faith.

The auDRP includes a number of differences to the UDRP including:

Rights in the name – inclusion of "name" in 4(a)(i)

The inclusion of the word "name" in the first element of the auDRP is intended to provide a ground of complaint where a registrant has registered or is using in bad faith the business (or other) name of the complainant. In other words, under the auDRP it is not necessary to show that the complainant has trade mark rights in the name. This difference is consistent with the eligibility (local presence) requirements for Australian domain names as there is no hierarchy of rights in the Australian DNS (that is, trade mark rights are not accorded any special significance).

Bad faith – registration or use in bad faith in 4(a)(iii)

The use of the word "or" in the third element of the auDRP was used in preference to "and" (used in the UDRP) so that the auDRP would apply in the situation where the registrant registers a domain name in bad faith but does not use it or where the registrant did not register the domain name in bad faith but has subsequently used it in bad faith.

Bona fide use defence in 4(c)(i)

Under the auDRP, licensing a domain name for the sole purpose of selling it is not considered bona fide and has explicitly been removed as a defence to an auDRP complaint. Also, if bona fide use is to be used as a defence to an auDRP complaint, the use must be before any notice to the registrant of the subject matter of the dispute. For example, the registrant's use between receiving a letter of demand and receiving notification of an auDRP complaint will be disregarded.

Legitimate interest in 4(a)(ii)

It relation to the issue of legitimate interest in 4(a)(ii), "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

To be successful, a complaint must address all three elements outlined under the essential elements heading. This is so even if the respondent chooses not to defend the action.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

As at May 14 2007, a total of 92 auDRP complaints had been filed since the introduction of the auDRP on August 1 2002. Decisions were issued in 82 of the 92 complaints filed. Fifty-one of the 82 decisions issued (62.2%) were at least partly in favour of the complainant (that is, including decisions relating to multiple domain names where the complainant succeeded in relation to one or more domain name).

How much does it cost to file a domain name dispute? What advice do you have for complainants?

The cost of filing an auDRP complaint is A$1,500 for a single-member panel and A$3,000 for a three-member panel. The respondent is not obliged to pay any costs (other than any representation costs) unless they elect to have a three-member panel, in which case they pay half the cost.

Other non-judicial complaint channels also exist in Australia. It is possible to challenge an Australian domain name registration under the Complaints (Registrant Eligibility) Policy (2004-01) on the basis that the registrant does not satisfy the relevant eligibility criteria.

For example, it might be possible to lodge an eligibility complaint if a registrant applied for a domain name on the basis that the domain name was derived from the textual element of a trade mark application and the trade mark application has subsequently lapsed.

Eligibility complaints are lodged with the Registrar of Record and the Registrar will re-confirm the eligibility details of the registrant. If the eligibility details are no longer current, the Registrar will contact the registrant and request that they update their eligibility details within 14 days. This means that the registrant will be able to retain the domain name if they can demonstrate they are eligible for the domain name on another basis.

If the registrant does not update their eligibility details within 14 days, or does not respond to the registrar's request, the Registrar will delete the domain name and it will become available for registration on a first come, first served basis.

Accordingly, it is generally prudent for a complainant to lodge an automated application through at least one Registrar (that is, backorder the domain name) before lodging an eligibility complaint.

It is also possible to lodge a complaint with auDA if it is considered that the registrant is in breach of certain auDA policies. For example, if it is considered that a registrant is in breach of the policy relating to domain monetization, a complaint can be lodged with auDA, which will investigate the complaint. If auDA determines that there has been a breach of the domain monetization policy, auDA will either contact the registrant, giving them seven days to rectify the breach, or instruct the Registrar of Record to delete the domain name depending on the nature of the breach.

There are no costs to file complaints under the eligibility or breach-of-policy provisions.

© Phillips Ormonde & Fitzpatrick. Scott Gardiner is an associate based in Melbourne, Australia

CHINA

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

Roman letter .cn and Chinese character .cn/.  domain names are available for registration in China. The China Internet Network Information Centre (CNNIC, at www.cnnic.cn) is responsible for the operation and administration of .cn ccTLDs and the Chinese Domain Name (CDN) system. Registration services are provided by registrars accredited by CNNIC. To register a .cn (Roman letter) domain name, an applicant should submit its application to one of the CNNIC Accredited Domestic Registrars. Registrations of .cn/.  (Chinese character) domain names are handled by CNNIC Accredited Chinese Domain Name Registrars.

The costs of registering and maintaining a .cn domain name vary depending on the registrar used. Roman letter .cn domain names can be registered or renewed at an average annual fee of Rmb100 ($13). In March 2007, CNNIC rolled out a promotion whereby Roman letter .cn domain names can be registered at a price of Rmb1. The promotion will last until the end of May 2007. CDNs can be registered or renewed at an average annual fee of Rmb280.

Are there any requirements that an applicant must fulfil?

When registering a .cn ccTLD, applicants must provide the host name and the IP addresses of the primary and secondary domain name servers. Registration of .cn domain names can be completed online. No local presence is required.

Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?

Administrative proceedings for the resolution of .cn domain name disputes are available under the CNNIC Domain Name Dispute Resolution Policy (.cn DRP). A registrant of a .cn domain name (whether a Roman letter .cn domain name or a CDN) is bound by the .cn DRP and is required to submit to mandatory administrative proceedings if a complaint is filed against it.

CNNIC has appointed two .cn domain name dispute resolution providers. These are the China International Economic and Trade Arbitration Commission (CIETAC) and Hong Kong International Arbitration Centre (HKIAC).

What requirements must a complainant fulfil to win a domain name dispute?

The .cn DRP is modelled on the ICANN UDRP, but contains a few variations. To succeed in a complaint under the .cn DRP, the complainant will need to show that:

  • the disputed domain name is identical with or confusingly similar to the complainant's name or mark in which the complaint has civil rights or interests;
  • the disputed domain name holder has no right or legitimate interest in respect of the domain name or major part of the domain name;
  • the disputed domain name holder has registered or is using the domain name in bad faith.

These three requirements under the .cn DRP are slightly more generous to complainants than the ICANN UDRP. For example, under the .cn DRP, a complainant can satisfy the first requirement by showing that the disputed domain name is identical or similar to its trade mark, mark or even its name. The second requirement under the .cn DRP can be satisfied by showing that the registrant has no legitimate interest in a portion of the domain name, rather than the whole domain name as required under the ICANN UDRP. Lastly, the third requirement under the .cn DRP allows the complainant to prove its case by showing either that the disputed domain name has been registered or is being used in bad faith by the registrant, rather than having to prove both.

The .cn DRP was revised on March 17 2006. The new policy brought about three major changes, all favouring registrants rather than complainants:

  1. A two-year time bar for filing domain name disputes. This means that it is not possible to file complaints against domain names that have been registered for more than two years. These domain names can only be recovered through court proceedings in the PRC.
  2. A clarification of how a registrant can prove legitimate interest. The following circumstances are enough to prove a legitimate interest in the domain name:
    - The registrant has used the disputed domain name or corresponding names in good faith to provide goods or services.
    - The registrant has not obtained any trade or service mark in respect of the disputed domain name, but has acquired a certain reputation in respect of the domain name through use.
    - The registrant has legitimately used the disputed domain name for commercial or non-commercial purposes and has used it without the intention of obtaining commercial gain or to mislead the public.
  3. A narrowing of the bad faith provision. Evidence of offers to sell, rent or transfer the domain name for profit needs to be directed at the complainant or its competitors.

What kind of evidence should a complainant supply?

As highlighted previously, complainants enjoy the benefit of having to satisfy less stringent requirements under the .cn DRP compared to the ICANN UDRP.

To satisfy the first requirement under the .cn DRP, a complainant will need to submit evidence to show that the disputed domain name is identical or similar either to its registered trade mark, (unregistered) mark or its name. Trade mark registration records (if available), materials demonstrating the complainant's use of the subject name or mark as a trade name or as a means to identify its business, as well as materials showing that the complainant is widely and commonly known by reference to the subject name or mark are all useful evidence in this regard.

As far as the second requirement is concerned, evidence showing that the registrant has neither any relevant trade marks in the PRC incorporating the whole or part of the disputed domain name, nor any other legitimate use of the whole or part of the disputed domain name would prove that the registrant does not have a right or legitimate interest in respect of the disputed domain name or a major part of that domain name.

In relation to the third requirement, bad faith in the registration or use of the disputed domain name may be established by the following non-exhaustive list of circumstances:

  • The purpose for registering the domain name is to sell the domain name registration to the complainant or to its competitor to obtain unjustified benefits.
  • The registrant registered the domain name to prevent the owners of the name or mark from reflecting its name or the mark in a corresponding domain name, provided that the registrant has been engaged in a pattern of such conduct.
  • The registrant has registered the domain name to damage the complainant's reputation, disrupt the complainant's normal business or create confusion with the complainant's name or mark so as to mislead the public.

Under the new bad faith provisions, complainants can no longer allege bad faith on the part of the registrant by sending anonymous offers to purchase the disputed domain name from the registrant. To secure evidence of bad faith, a complainant should send a cease and desist letter to the registrant asserting its rights in the domain name and offering to buy the domain name from the registrant at cost. If the registrant responds by asking for a higher price, the complainant will be able to adduce this as evidence of bad faith.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

About 540 .cn domain name disputes have been filed with CIETAC and HKIAC over the years, out of which about 400 cases resulted in a transfer of the disputed domain name to the complainant.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

A complainant can choose to have a single panellist or a panel of three to handle its complaint. The fee for a single panellist in respect of a single domain name is Rmb4,000, while that for a panel of three is Rmb7,000. Fees will also vary depending on the number of domain names under dispute.

To initiate the domain name complaint process under the .cn DRP, a complainant submits a prescribed complaint form available at the websites of CIETAC and HKIAC. The procedure adopted by CIETAC and HKIAC is the same. The dispute resolution centre forwards the complaint form to the registrant, after which the registrant has 20 days to submit a response. The dispute resolution centre then appoints the panel within five days. A decision will be rendered within 14 days. There is a 10-day window before the decision is finalized. Once finalized, the decision is posted on the website of the relevant dispute resolution centre.

As with all domain name complaints, a complainant should substantiate its case by submitting supporting evidence instead of merely putting forward bare assertions. Research and investigations are necessary to collect evidence.

Have there been any cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

Domain name complaints under the .cn DRP do not follow a precedent system. Previous decisions are not binding precedents and can only be used as a reference.

In Hugo Boss AG v Wenzhou Lucheng District Shangshu Sunbird Department Store and Zhao Ke Jian, the respondent registered the domain names boss.cn and boss.com.cn. Before receiving the complainant's cease and desist letter, the disputed domain names did not resolve to any operational website. The panellist accepted the complainant's submission that the respondent's failure to use the domain names was sufficient evidence of bad faith in appropriate circumstances. The panellist took into account the fact that the complainant must have been aware of the complainant's Boss trade mark when he registered the domain names, and held that the complainant had registered and was using the domain names in bad faith.

Registration and use of the disputed domain name in bad faith are only alternative requirements under the .cn DRP. In Anheuser-Busch Inc v Sun Shao Xun, although there was no evidence that the respondent was using the domain name  (transliteration: Budweiser beer.com), the panellist pointed out that bad faith is established if the respondent registered the domain name to create confusion with the complainant so as to mislead the public. The panellist found the respondent to have registered the disputed domain name in bad faith because the respondent knew or should have known that the domain name incorporates the complainant's trade mark. An order was made for the disputed domain name to be transferred to the complainant.

© Gabriela Kennedy and Rosanna Chow. The authors are a partner and a trainee solicitor respectively, working in the intellectual property, media and technology group of Lovells, Hong Kong

HONG KONG

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

Both Roman letter and Chinese character .hk domain names are available for registration in Hong Kong. Dot-hk ccTLDs are administered by Hong Kong Internet Registration Corporation Limited (HKIRC), which provides registration services through its wholly owned subsidiary, Hong Kong Domain Name Registration Company Limited (HKDNR) at www.hkdnr.hk.

Table 1: HKDNR fees
Registration/renewal fee (per domain name (HK$))
Contract periodSecond level domain
name
(.hk)
Third level domain
name
(.com.hk)
One year$250$200
Two years$500$400
Three years$625$500
Five years$1,000$800

Are there any requirements that an applicant must fulfil?

Applicants must provide details of two domain name servers (DNS) that are independent, operational and connected to the internet. Registration of .hk domain names can be completed online. No local presence is required for second level (that is, domain.hk) domain names. Applicants for third level (domain.com.hk) domain names must have a local presence (that is, applicants must be entities registered or incorporated in Hong Kong).

Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?

Dot-hk domain name disputes can be resolved by arbitration proceedings under the Hong Kong Domain Name Registration Company Limited Dispute Resolution Policy (.hk DRP). The disputes can also be taken to court. As proceedings under the .hk DRP are arbitration proceedings, no appeal to the court from a decision of a panel is possible, except in certain circumstances as set out in the Arbitration Ordinance. Complainants therefore need to make an assessment of their case and decide whether to proceed with arbitration under .hk DRP or initiate court proceedings. A registrant of a .hk domain name is bound by the .hk DRP and is required to submit to mandatory arbitration proceedings if a complaint is brought against it.

The Hong Kong International Arbitration Centre (HKIAC) is the sole provider of dispute resolution services for .hk domain names.

What requirements must a complainant fulfil to win a domain name dispute?

The .hk DRP is largely modelled on the ICANN UDRP. To succeed in a complaint under the .hk DRP, the complainant needs to show that:

  • the disputed domain name is identical or confusingly similar to a trade mark or service mark in Hong Kong in which the complainant has rights;
  • the registrant has no rights or legitimate interests in respect of the disputed domain name; and
  • the disputed domain name has been registered and is being used in bad faith.

The .hk DRP adopts word for word the three requirements under the ICANN UDRP. The most important difference between the .hk DRP and the ICANN UDRP is that the .hk DRP is an arbitration process and not an administrative process, which means that any award made by the HKIAC in respect of a .hk domain name is final and cannot be challenged by commencing court proceedings.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

Since 2001, 31 .hk domain name disputes have been filed and handled by the HKIAC. Nine cases were withdrawn, 12 cases were resolved in favour of the complainant, with the disputed domain name being ordered to be transferred to the complainant, one case resulted in the disputed domain name being cancelled, and in seven cases the panellist found in favour of the registrant. Two cases are still pending.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

A complainant has a choice between a single panellist and a panel of three panellists. The fee for a single panellist is HK$8,000 ($1,000), while that for a panel of three is HK$16,000.

Filing a domain name dispute under the .hk DRP starts with the submission of the complaint form available at http://www.hkiac.org/HKIAC/HKIAC_English/main.html. The HKIAC forwards the complaint form to the registrant, and then the registrant has 20 days to submit a response. HKIAC will then appoint the arbitration panel within five days of the response being received. Parties have seven days to challenge a panellist's appointment. The arbitration panel has 21 days to render a decision. There is a 10-day window before the decision is finalized. Once finalized, the decision is posted on the website of HKIAC.

To succeed in a domain name complaint, a complainant should try its best to help the panellist reach a decision by putting forward as much supporting evidence as possible. Mere assertions will do little to advance the complainant's case. The complainant should do research and conduct investigations to collect evidence to substantiate its case.

What kind of evidence should a complainant supply?

In relation to the first requirement, the complainant has to show it has rights in a trade mark or service mark in Hong Kong reflecting the disputed domain name. Unregistered trade mark rights satisfy the first requirement. In the case of Lycos Asia (HK) Limited v Times Agency, the first requirement was satisfied even though the complainant did not have relevant trade mark registrations in Hong Kong. The Lycos trade mark was registered in various jurisdictions, but the complainant only had pending trade mark applications in Hong Kong for the mark. The panellist held that this satisfied the first requirement.

As far as the second requirement is concerned, trade mark search results showing that the registrant does not own any relevant trade mark in Hong Kong are helpful in establishing preliminarily that the registrant does not have a right or legitimate interest in respect of the disputed domain name. This may be further supported by evidence confirming that the relevant name is neither used by the registrant as a company name or trade name, nor used in any other legitimate way.

In relation to the third requirement, registration and use of the disputed domain name in bad faith may be established by the following:

  • Circumstances indicate that the registrant has registered the domain name primarily to sell the domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the registrant's out-of-pocket costs in registering the domain name.
  • The registrant has registered the domain name to prevent the complainant from reflecting its trade mark or service mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.
  • The registrant has registered the domain name primarily to disrupt the business of a competitor.
  • By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users who would never have otherwise visited the registrant's website by creating a likelihood of confusion that his website is related to the complainant.

Have there been any cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

Unlike court cases, .hk domain name disputes do not follow a precedent system. Panellists are not necessarily influenced by previous decisions. So previous decisions are only of referential value.

Verisign Inc v Kristopher-Kent Harris (2007) is the second attempt by the complainant to recover the domain name verisign.hk under the .hk DRP, having failed in its first attempt in 2006.

The complainant contended that the previous complaint did not have a res judicata effect on the second proceeding because the respondent had substantially changed the use of the verisign.hk domain name. During the previous complaint, the respondent's website was password protected. However, the disputed website was then made available to the general public as a website under construction bearing the words "Verisigns' of Georgia Family Tree". "VeriSign" is the registered trade mark of the complainant in Hong Kong and elsewhere. The complainant also submitted evidence showing that the respondent had since the decision of the previous complaint registered at least 10 additional domain names incorporating trade marks of other trade mark owners, illustrating the bad faith intentions of the respondent.

The panellist accepted that the complainant's re-filed complaint did not raise any issue of res judicata on the ground that new circumstances had arisen after the previous complaint. The panellist disagreed with the respondent that Verisign was a common family name, finding instead that Verisign was neither in the daily use of the English language nor a generic term, at least in Hong Kong. The panellist agreed with the complainant that the respondent's act of registering domain names using various well-known trade marks pointed to the engagement of the respondent in a pattern of conduct to prevent trade mark owners from reflecting their marks in a corresponding domain name. The panellist was satisfied that the respondent had registered and was using verisign.hk in bad faith, and ordered the transfer of the domain name to the complainant.

© Gabriela Kennedy and Rosanna Chow. The authors are a partner and a trainee solicitor respectively, working in the intellectual property, media and technology group of Lovells, Hong Kong

INDIA

How much does it cost to register and maintain a country code top level domain name (ccTLD) in your jurisdiction?

The .in ccTLD was revamped in 2005 and new extensions of this ccTLD were made available for registration. Now the list consists of .in, .co.in, .gen.in, .ind.in, .org.in, and .net.in.

The .in Registry operates under the authority of the National Internet eXchange of India, which is an autonomous body created by the government and a company under Section 25 of the Indian Companies Act.

The initial period for registration was demarcated as a sunrise period where proprietors of trade marks in India could get the domain names corresponding to their trade marks registered on a priority basis. This period was followed by the so-called land rush period where domain names were made available to the general public.

The number of domain names under the new .in extensions stood at a staggering 200,000 in November 2006.

Domain names are registered through an accredited registrar who is affiliated with the .in Registry (that is, the registry responsible for registering domain names under the .in extension).

The cost of registering a .in domain name is $20 and for other extensions such as .co.in, gen.in, net.in, the cost is $12 for a period of one year.

Are there any requirements that an applicant must fulfil?

There are no requirements such as domicile of the registrant for registering a .in domain name. Other extensions such as gov.in, res.in, and ac.in are reserved for government agencies and academic institutions respectively and, as such, no individual or corporate entity can have domain names under these extensions in India.

Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?

The .in Registry at the time of its inception in January 2005 incorporated a domain name dispute resolution policy called the INDRP, which is loosely based on the UDRP with a few modifications. Though the INDRP was set up in January 2005, it came into existence only in mid-2006.

Disputes under the INDRP are decided by arbitrators appointed by the .in Registry. The arbitrator makes the decision on the basis of the material submitted to him and in accordance with the Arbitration and Conciliation Act, 1996. All disputes are decided by a single member panel.

It is important to note that one of the major points of difference between the INDRP and the UDRP is that under the bad faith criteria of the INDRP the complainant only needs to prove that either the domain name was registered in bad faith or that it was used in bad faith. This is a major change from the UDRP where the complainant has to satisfy both requirements (that is, that the domain name has been registered in bad faith and is being used in bad faith).

Another major difference between the INDRP and the UDRP is that any party can be awarded costs under the INDRP as the arbitrator deems fit.

Additionally under the INDRP any party to the proceedings can, on payment of an additional fee of $120, ask for in-person hearings under exceptional circumstances.

What requirements must a complainant fulfil in order to win a domain name dispute?

The complainant has to satisfy the following criteria:

  • the registrant's domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights;
  • the registrant has no rights or legitimate interests in respect of the domain name; and
  • the registrant's domain name has been registered or is being used in bad faith.

What kind of evidence should a complainant supply?

The complainant should substantiate its claim for the impugned domain name by submitting documents substantiating its trade mark or common law rights.

The complainant also needs to establish substantial goodwill in the trade mark which has been incorporated in the impugned domain name and annex documents depicting its use as well as advertising and sales figures and other such documents. These help to establish the complainant's trade mark rights.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

Since the inception of the INDRP a total of 25 domain name disputes have been submitted to the .in Registry for adjudication. Out of these, complainants have been successful in 19 disputes. In three disputes the complainant was unsuccessful.

One notable trend is that in three disputes the domain names were neither transferred to the complainant nor retained by the respondent but were confiscated by the .in Registry with a direction that they were not to be made available for registration.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

The cost of filing a domain name dispute is $750 out of which $600 is paid to the arbitrator adjudicating the domain name dispute.

The rest is retained by the .in Registry for expenses incurred during the arbitration. Additionally, any party can ask for an in-person hearing by paying the requisite fee of US$120.

It is important to remember that the Delhi High Court as well as the Supreme Court of India has time and again accorded the same degree of protection to domain names as it does to trade marks on the internet and the chances of claiming damages have also increased in cases where there is a successful claim before the courts.

Furthermore, the INDRP procedure does not prevent complainants from approaching the courts for adjudication of domain name disputes. This is evident from Para 12(ii) of the INDRP Policy, which makes a reference to "pending court proceedings" and thus implies that approaching the courts to adjudicate domain name disputes is not prohibited.

Have there been any key cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

One of the earliest cases decided by the Delhi High Court in this sphere was Yahoo! v Akash Arora (PTC 1999 201), in which the Delhi High Court held that a domain name serves the same function as a trade mark and is therefore entitled to equal protection. As the domain names of the plaintiff and defendants were nearly identical and phonetically similar, there was every possibility that internet users would be confused and deceived into believing that the domain names had a common source or a connection.

This ruling was also a landmark considering that the Court held that a disclaimer, used by the defendants, was insufficient because the nature of the internet is such that use of a similar domain name cannot be rectified by a disclaimer. It said that the fact that the word yahoo is included in the dictionary was irrelevant. The name had acquired uniqueness and distinctiveness and was associated with the plaintiff.

In Satyam Infoway Ltd v Siffynet Solutions Pvt Ltd (2004 (28) PTC 566 (SC)) the Supreme Court of India affirmed the inclination of the Indian judiciary to afford the same degree of protection to domain names as to trade marks. The Supreme Court held, among other things, that domain names are business identifiers and should be protected as far as possible by the law of passing off.

In Pfizer Products Inc v Altamash Khan (2006(32) PTC 208) the Delhi High Court for the first time ordered the interim transfer of a domain name, viagra.in, to the plaintiff Pfizer pending final adjudication of the domain name in dispute.

The Delhi High Court has also awarded exemplary costs and damages in Buffalo Networks v Manisdh Jain (2005 (30) PTC 242) of Rs100,000 ($2,500) after ruling that the defendants had infringed the plaintiff's trade mark Tehelka by incorporating the trade mark Tehelka in the domain name tehelka.com.

The Delhi High Court in the last one year has protected abusive registrations of domain names such as novartis.in, playboy.in and siebel.in.

© Shrawan Chopra. The author is an associate with Anand and Anand in New Delhi, India

JAPAN

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

In Japan, ccTLDs can be classified into two categories. The first is the organizational/geographic type .jp domain name. Each organization can register only one .jp domain for its organization. For example, a company doing business is allowed to register one domain name co.jp. The other type is the general use .jp domain name, which is not subject to such restrictions. The registration should be filed through the .jp registrars, who charge fees for registration and maintenance. Their fees vary slightly. The following is an example. The renewal fee is charged on a yearly basis. For organizational/geographic type domains, the registration fee is ¥20,000 ($165) and the renewal fee is ¥7,350. The registration fee for general use names is ¥9,450 and the renewal fee is ¥7,350.

Are there any requirements that an applicant must fulfil?

Yes, only individuals, organizations or associations having their permanent address in Japan can register a .jp domain name.

Is there some non-judicial way of resolving domain name disputes?

Yes. The Japan Network Information Centre adopted the JP Domain Name Dispute Resolution Policy (JP-DRP) and Rules for JP Domain Dispute Resolution Policy in July 2000 and designated the Japan Intellectual Property Arbitration Centre (JIPAC) as a dispute resolution provider.

What requirements must a complainant fulfil to win a domain name dispute?

The JP-DRP is basically modelled on the UDRP and the complainant has to assert three requirements of similarity, no legitimate interest and bad faith. As regards the bad faith requirement, the UDRP requires that the domain "has been registered and is being used in bad faith". In contrast, the JP-DRP expressly provides that the domain "has been registered or is being used in bad faith".

What kind of evidence should a complainant supply?

It varies on a case-by-case basis. Many complainants produce written evidence to prove the high reputation of their subject trade mark. This evidence will contribute to demonstrating the bad faith requirement, which is so often disputed.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

Since the start of the JP-DRP of July 2000, 52 complaints have been filed. Six cases have been withdrawn and the other cases have been resolved by a decision. Except in one case, all the cases have been resolved in favour of the complainant.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

You have to pay JIPAC a filing fee of ¥189,000 for a one-panellist case and ¥378,000 for a three-panellist case. The procedure is similar to that used by ICANN providers. The complainant needs to prepare the complaint and supporting evidence well.

Have there been any cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

There has been a general criticism that cases have been resolved too much in favour of complainants. As a result, the JP-DRP has been modified – primarily related to the non-legitimate requirement and the complainant's burden of proof. The previous version said "you have no rights or legitimate interests in respect of the domain name registration", but the word "registration" has been deleted and it is now the same as UDRP. In the previous version, it is provided "the complainant must assert," but the new version says "the complainant must prove," using the same wording as UDRP. The new JP-DRP will come into force on June 1 2007.

© Yukukazu Hanamizu. The author is a partner of Yuasa & Hara, Tokyo, Japan

MALAYSIA

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

The Malaysian Network Information Centre (MYNIC) administers the name space for the country code top-level domain .my for Malaysia. It has also appointed more than 30 resellers, including Emerge Systems, IPXcess Dotcom, Asia Pacific Net, Webvisions Network Services, Exa Bytes Network and Qinetics Solutions Berhad.

Applications for registration of domain names with .gov.my, .edu.my and .mil.my must be submitted to MYNIC directly and the cost is RM100 ($30) for each application.

Applications to register domain names with .com.my, .org.my and .net.my, must be submitted to one of the resellers appointed by MYNIC. The fee is at their discretion but the maximum cost is RM100.

Applications to register domain names with .name.my must also be submitted to the resellers. The fee is at their discretion but the maximum cost is RM40.

To maintain the domain name, an annual renewal fee of RM100 must be paid to MYNIC for the .gov.my, .edu.my and .mil.my domain names. The maximum annual renewal fee payable to the resellers for .com.my, .org.my and .net.my is RM100 and for .name.my RM40.

Are there any requirements that an applicant must fulfil?

Applicants should note that .com.my is for commercial organizations or activities; .net.my is for network-related organizations or activities; .org.my is for organizations or activities that do not qualify for other categories; .edu.my is for Malaysian educational organizations only; .gov.my is for Malaysian government organizations only; .mil.my is only for Malaysian military organizations and .name.my is for individuals aged 18 and above.

Organizations formed under the Companies Act 1965, Business Act 1956, Commercial Licence Ordinance 1948 and Societies Act 1966 must submit their certificates of registration when applying for domain name registration. Individuals applying to register personal domain names must submit a photocopy of the Malaysian National Registration Identity Card. If the applicant is not Malaysian, he must show proof of residence in Malaysia and have a valid passport.

Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?

Domain name disputes may be resolved under MYNIC's (.my) Domain Name Dispute Resolution Policy (MYDRP). The Regional Centre for Arbitration Kuala Lumpur provides the dispute resolution service.

What requirements must a complainant fulfil to win a domain name dispute?

MYDRP is basically modelled on the UDRP. There are some differences. The UDRP requires the complainant to establish that:

  • the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
  • the domain name holder has no rights or legitimate interests in the domain name; and
  • the domain name is registered and used in bad faith.

The MYDRP, on the other hand requires the complainant to establish that:

  • the domain name is identical or confusingly similar to a trade mark or service mark to which the complainant has rights; and
  • the domain name is registered and/or used in bad faith.

The domain name holder's rights and legitimate interest in the domain name become relevant for the purpose of showing that it has not registered the domain name in bad faith.

What kind of evidence should a complainant supply?

The complainant should provide copies of registration of its trade mark which is identical or confusingly similar to the domain name and/or also furnish documents showing long and substantial use of the mark.

The complainant should produce evidence to show that the respondent:

  • registered and/or is using the domain name mainly to sell, rent or to transfer it for profit to the complainant, its competitor or the owner of the trade mark;
  • registered and/or is using the domain name to prevent the owner of a trade mark using the domain name which is identical to its trade mark;
  • registered and/or is using the domain name to disrupt the business of the complainant; or
  • registered and/or is using the domain name for the purposes of and with the intention to attract or divert, for commercial gain, internet users to the respondent's web site, a web site of the complainant's competitor, or any other web site and/or online location by creating a possibility of confusion or deception that the web site and/or online location is operated or authorized by, or otherwise connected with the complainant and/or its trade mark.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

Nine ccTLD disputes have been filed so far. Three were terminated, six have been resolved of which four were in favour of the complainant. Particulars of the resolved disputes are shown in Table 2.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

The fees payable to the Regional Centre for Arbitration Kuala Lumpur to resolve a domain name dispute shown in Table 3.

Fees are to be paid by the complainant but the respondent will have to share equally the fees if the complainant has chosen a single member panel and the respondent opts for a three-member panel. The parties will also have to pay their solicitors' costs.

The administrative procedure is as follows:

  • The complainant files the complaint with the Regional Centre for Arbitration Kuala Lumpur.
  • The Centre requests from MYNIC a verification as to the registration of the domain name.
  • The Centre verifies whether the complaint has satisfied the requirements of MYDRP, the Rules for MYDRP and its own Supplemental Rules;
  • The Centre notifies the respondent of the complaint and gives the date of commencement of the proceeding.
  • The respondent submits its response within 15 working days from the date of commencement of the proceeding.
  • The complainant submits its reply (if any) within five working days from receipt of the response.
  • The Centre appoints the panel and sends it the file containing the relevant documents.
  • The panel gives its decision within 14 working days from the date of receipt of the file.

To improve its chances of success, the complainant should register its trade mark and service mark in Malaysia and as many countries as possible, market its products and services extensively, secure national domain name registrations in several jurisdictions and an international domain name registration with an accredited Registrar of ICANN, incorporating its trade mark and service mark.

Have there been any cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

In William R Hague Inc (see Table 2), the complainant alleged that the disputed domain name waterboss.com.my, registered by the respondent, was identical or confusingly similar to its trade mark Waterboss and that the registration was in bad faith. The respondent produced evidence of use of the name Waterboss in its business. The panel took the view that the administrative procedure available under MYDRP was an inappropriate vehicle for making a conclusion that the disputed domain name was registered and/or used in bad faith. Any decision made by the panel could be seen as determining the parties' trade mark rights, which was within the province of the Registry of Trade Marks or the courts. The effect of this decision is that, where there is a dispute as to the rights of the parties in a trade mark or service mark that forms part of the disputed domain name, the matter should first be resolved by the court or the appropriate authority in the relevant jurisdiction before proceedings are commenced under MYDRP.

ccTLD disputes in Malaysia
CaseComplainantRespondentDomain namesDecision
rca/dndr/2003/01(int)Volkswagen Group SingaporeWebmotion Designvolkswagen.com.myTransfer
rca/dndr/2004/02Hugo BossEppies Internetboss.com.myTransfer
rca/dndr/2004/04NEP Holdings (Malaysia)Liew Bin Dian t/a C&C Network360agaricus.com.myTransfer
rca/dndr/2004/05Ledtronics IncLetronics Sdn Bhdledtronics.com.myRemain
rca/dndr/2005/07NetflowersChan Hong Mun (MyMall Dot Com Enterprise)myflower.com.myTransfer
rca/dndr/2006/09William R Hague (Hague Quality Water International)Water N Boss Marketingwaterboss.com.myRemain
Source:http://www.rcakl.org.my/decision.html

Dispute resolution fees
Single-member panel
Number of domain names included in the complaintPanellist fee (RM)Administrative fee (RM)Total fee (RM)
One to two domain names2,0005002,500
Three to six domain names2,4006003,000
Seven to 10 domain names3,0007503,750
11 to 15 domain names3,6009004,500
More than 15 domain namesTo be decided
Three-member panel
Number of domain names included in the complaintProceeding fees for three-member panel (RM)President (RM)Co-panellist (RM)Administrative fee (RM)Total fees (RM)
One to two domain names4,000(2,000)(1,000)1,0005,000
Three to six domain names4,800(2,400)(1,200)1,2006,000
Seven to 10 domain names6,000(3,000)(1,500)1,5007,500
11 to 15 domain names7,200(3,600)(1,800)1,8009,000
More than 15To be decided
Source:http://www.rcakl.org.my/schedulefees.html

© Hariram Jayaram. The author is managing partner of RamRais & Partners, Kuala Lumpur, Malaysia

NEW ZEALAND

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

Dot-nz domain names must be registered through an approved .nz registrar. These registrars charge in different ways depending on the level of service they provide. It is possible to register a .nz domain name for anywhere between one month and 120 months. Some registrars charge by the month, while others offer annual registration and renewal. A typical annual registration will cost between $30 and $50. Although all registrars should theoretically be secure and reliable, registrants will tend to pay more for service providers offering guaranteed automatic renewal.

Are there any requirements that an applicant must fulfil?

It is possible to register domain names within the following sub domains of .nz: .co.nz, .net.nz, .org.nz, .geek.nz, .maori.nz, .school.nz, .iwi.nz, .cri.nz, .mil.nz, .parliament.nz, .ac.nz, .gen.nz and .govt.nz.

Of these, .cri.nz (crown research institutes), .govt.nz (government bodies), .iwi.nz (Maori tribes), .mil.nz (military) and .parliament.nz are moderated. There are no residency or any other requirements for registration of un-moderated domains.

Is there some non-judicial way of resolving domain name disputes?

Yes. New Zealand instituted its own dispute resolution process for .nz domains in 2006. This is loosely based on the .uk dispute resolution system and the service is managed by the Domain Name Commissioner. The Commissioner has appointed a panel of experts who take turns in determining the outcome of these disputes.

What requirements must a complainant fulfil to win a domain name dispute?

The complainant must show that:

  • the complainant has rights in respect of a name or mark that is identical or similar to the domain name; and
  • the domain name, in the hands of the respondent, is an unfair registration.

"Unfair registration" is defined as a domain name that either:

  • was registered or otherwise acquired in a manner that, at the time, meant registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant's rights; or
  • has been, or is likely to be, used in a manner that took unfair advantage or was unfairly detrimental to the complainant's rights.

A non-exhaustive list of factors that may evidence that the domain name is an unfair registration is set out in the rules. A non-exhaustive list of factors that may evidence that the domain name is not an unfair registration is also provided.

What kind of evidence should a complainant supply?

Generally, evidence of a trade mark registration and/or reputation in trade will satisfy the requirement that the complainant has rights in respect of the name or mark. Evidence that the registration is an unfair one is also required. This might take different forms depending on the facts. For example, this may show that:

  • The respondent registered the name to sell it or as a blocking registration, or to unfairly disrupt the complainant's business.
  • The respondent is using the name in a confusing or misleading way.
  • The respondent is engaged in a pattern of registrations to which the respondent has no apparent rights.
  • The respondent has knowingly given false contact details.
  • The name was registered rising out of a relationship between the complainant and the respondent wherein it was intended that the complainant would be the registrant of the name.

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

As at May 2007, there have been 13 disputes determined in relation to .nz names since the dispute resolution system was initiated in 2006. Of these, nine have resulted in the domain name being transferred or cancelled and three were dismissed. A further dispute involved two names, one of which was transferred and the other was dismissed.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

There is no official fee for initiating a complaint. The process is that, after a complaint is filed, the Domain Names Commissioner notifies the registrant and they have 15 days to file a response. Within five days of receiving a response, the complainant can file a further submission confined to answering any new points raised in the response.

If the respondent has filed a response, a mediator is appointed and will informally contact the parties in an attempt to resolve the issue. If mediation fails, the complainant must then pay a fee of NZ$1,800 ($1,300) for the submissions to be placed before an expert. Unless there are exceptional circumstances the expert will provide his or her decision to the Domain Names Commissioner within 10 days.

There is a single appeal to a board of three of the experts. The fee for an appeal is NZ$6,600 ($4,800).

In terms of practical measures that a complainant can take to increase their chances of winning, the most critical thing is the complaint itself. If the complaint is not well drafted and does not raise the appropriate presumptions of fact, the complaint will be dismissed. Experience with the experts to date is that they will not fill in the gaps or presume any facts that are not adequately evidenced in the complaint.

Have there been any cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

Each case has clarified different minor points, but the overriding message from the cases is to ensure that the complaint ticks all the right boxes. It is essential that evidence of each required element is provided in the complaint and that nothing is presumed. The lessons from the cases that have been dismissed consistently reinforce that message. For example, in the very first decision that was released, a complaint against a registration of the name www.harcourts.co.nz was dismissed on the grounds that the complainant was a licensee, and its licence agreement provided that it did not have any rights in respect of the name. The complaint clearly should have been taken in the name of the trade mark owner.

Although the process seems informal, the decisions that are made are made on a strict legal interpretation of the procedure and rules.

© Damian Broadley. The author is a partner with A J Park in Wellington, New Zealand

SOUTH KOREA

How much does it cost to register and maintain a country code top-level domain name (ccTLD) in your jurisdiction?

Article 14(1) of the Internet Assigned Names and Numbers Resource Law (IANNRL) sets out the costs to register and maintain Korean country code top-level domains (ccTLD). The cost to register one ccTLD domain name in Korea, aside from agent fees, is W28,600 ($30) (or W17,600 for pe.kr). Under the Domain Name Management Regulations, various providers compete for domain name registration business, and determine and offer different service fees. Maintenance fees to extend the service term vary depending on the length of the term. Discounted rates usually apply for long-term extensions. In general, the costs to register and maintain a single domain name for 10 years is about W257,000.

Are there any requirements that an applicant must fulfil?

Article 4 of the Domain Name Management Regulations says that to register a ccTLD in Korea, both the registrant and the registrar must have an address in Korea. Domains available for registrations are: .co.kr, .ne.kr, or.kr, and .re.kr for corporations and individuals; .pe.kr for persons; and .go.kr for government agencies. Any foreign company can also apply for a ccTLD registration in its name as long as it has an office within Korea.

Is there some non-judicial way of resolving domain name disputes? If so, who provides the dispute resolution service?

In addition to judicial proceedings, Korea provides an arbitration system by which domain name disputes are resolved either by the law (IANNRL) or by stipulation (Domain Name Dispute Resolution Regulations). The arbitral procedures under the law can proceed only if both parties agree, and any arbitral decision issued by the arbitral board, which consists of three arbitrators, is not valid without the approval of both parties. Arbitration by stipulation, on the other hand, may proceed without obtaining the consent of the respondent, and the hearings may be held without the respondent submitting a reply. The arbitral board, which consists of one or three arbitrators, will determine whether the registration of the domain name in question should be transferred or cancelled.

The Internet Address Dispute Resolution Committee (IDRC) under the administration of the Ministry of Information and Communication oversees the arbitral system by which domain name disputes are resolved, either by the law or by the stipulation. And, of course, the court system provides the general judicial proceedings for resolution.

What requirements must a complainant fulfil to win a domain name dispute?

While the UDRP applies only to a certain type of disputes, such as cybersquatting, the Korean Domain Name Dispute Resolution Policy (KDNDRP) covers any infringement of rights in violation of the law, and so has broader applications. Accordingly, any complainant who seeks a decision to transfer the respondent's domain name registration to the complainant or to cancel the domain may do so by submitting evidence that proves the following under Article 9 of the Domain Name Dispute Resolution Regulations:

  • that the use of the domain name by the respondent infringes on the rights of the complainant's trade marks or service marks registered in Korea;
  • that the use of the domain name by the respondent causes confusion with the complainant's products or business widely recognized in Korea;
  • that the use of the domain name by the respondent causes damage to the identification or reputation of the complainant's name, title, trade marks, service marks or trade name that are well known in Korea; and
  • that the registration, retention or use of the domain name by the respondent interferes with the registration and use of the domain name by a legitimate title holder or was done for unlawful purposes such as an attempt to sell or lease the marks, including trade marks, to a legitimate title holder.

What kind of evidence should a complainant supply?

The most effective evidence for resolving a domain name dispute would be separate evidence for each of the items to be proven as listed in Article 9 of the Domain Name Dispute Resolution Regulations. That is, 1) when asserting Article 9(1)-1, the trade mark registration and the evidence of the infringement; 2) when asserting Article 9(1)-2, the evidence of the prominence of the trade mark in Korea, the trade mark registration and the activities of the registrant that cause confusion with the products or business; 3) when asserting Article 9(1)-3, the evidence of the prominence of the trade mark in Korea and the evidence of the damage to the identification or reputation; and 4) when asserting Article 9(2), the evidence of the legitimate right holder (trade mark holder or service mark holder), the evidence of the prominence of the mark in question, if applicable, and the evidence of unlawful intention of the other party, such as any proposal to sell the mark or malicious use of the mark (such as resolving to a pornographic site).

If there is a domain name dispute provider, how many ccTLD disputes have been filed in the past five years? Of those, how many have been resolved, and how many have been resolved in favour of the complainant?

Since 2002, a total of 221 disputes have been referred to the arbitral system of the IDRC (including the Domain Name Dispute Resolution Committee) with 176 resolved (69 for transfer and 88 for cancellation). Eleven cases were dismissed. As for disputes brought before the court since the Chanel case of October 8 1999, there have been about 176 reported cases as of the end of June 2006, including five cases decided by the Supreme Court. Of those, there were about 90 cases seeking the permanent prohibition of the use or cancellation of the domain name with about another 90 cases seeking provisional injunctions as a preliminary step before litigation on the merits. Excluding appeals and related criminal cases, 63 cases concerned disputes over domain names, and of those, 52 cases resulted in decisions to cancel the registration or prohibit the use of the domain name, while the other 11 cases were dismissed.

How much does it cost to file a domain name dispute? What advice do you have for complainants?

If you want to resolve a domain name dispute through the arbitral procedures of the IDRC, it will cost W880,000 ($950) for a one-person arbitral board or W1.76 million for three-person arbitral board. This amount accounts only for fees incurred during the arbitral procedures and excludes attorney fees.

Have there been any cases relating to domain name disputes that have changed the way that IP owners should deal with disputes?

As briefly explained above, the KDNDRP has broader applications in some sense in comparison with UDRP, but the protection under the KDNDRP focuses more on the trade mark registration, actual use and reputation in Korea. So if the domain name is used for a product or service that is not the designated product or service of the trade mark and/or the trade mark is not widely recognized in the field for which the domain name is used, it is not always easy for the trade mark owner to get the domain name back or to get the domain name cancelled under the KDNDRP. A number of cases illustrate this problem. The first is Case 2004-0021, in which UPS failed to get or cancel the domain name upsbank.co.kr from a registrant who was using the domain name for Uninterruptible Power Supply products. The second is Case 2004-0011 in which Isetan, a famous department store operator in Japan and other Asian countries (but not in Korea), failed to get or cancel the domain name isetan.co.kr.

© Boh Young Hwang. The author is a partner of Bae Kim & Lee in Seoul, Korea

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