Introduction
Dispute resolution centres and applicable rules
Rules applicable to domestic lawsuits for ''.com'' gTLD disputes
Comment
Nowadays, due to the fact that the Internet is widely accessible and international trade is widespread, companies, agencies and even individuals use domain names relating to their designations, names or trademarks to boost their recognition online. No longer just the web address of a website, domain names have increasingly become a symbol indicating the provider of the website and the goods or services shown on it.
Given this trend, right holders now exercise greater care in protecting their rights and interests from domain name infringement. However, as domain name applications are processed quickly and require only a formality examination, a prior rights holder that suspects domain name infringement must file a complaint separately with a dispute resolution centre, which will then step in to examine the domain name in question substantively and determine whether such registration is abusive or infringing.
The growing demand for and development of domain name applications has led to more types of domain name worldwide. A rights holder seeking to file a complaint against an abusive domain name registration first needs to consider two basic issues:
- the dispute resolution centre with which to lodge the complaint; and
- the rules on which the complaint is based.
If, after a decision is rendered by the selected dispute resolution centre, the right holder seeks to file a suit in a Taiwanese court in relation to the decision, the rules will take on significance in the litigation. In fact, how the rules are factored in lawsuit considerations is the core issue in addressing domain name disputes. A recently rendered civil judgment of the Intellectual Property and Commercial Court provides insight into this issue.(1)
This article discusses ".com" domain name dispute resolution centres and the applicable rules, and compares them to ".tw" domain name disputes for reference.
Dispute resolution centres and applicable rules
Domain name dispute resolution centres and the applicable rules vary according to type of domain name. Generic top-level domains (gTLDs) (eg, ''.com'') and country code top-level domains (ccTLDs) (eg, ''.tw'') are two common types of domain name.
".tw"
Disputes over ''.tw'' domain names in Taiwan may be handled by dispute resolution service centres such as the Science & Technology Law Institute under the Institute for Information Industry and the Taipei Bar Association. The Domain Name Dispute Resolution Policy shall be applicable to such disputes. Parties that are dissatisfied with the panel's decision may file a suit with the court to suspend the implementation of the panel's decision on the basis of article 10(1) of the Domain Name Dispute Resolution Policy, which states: "The provisions of this Policy shall not prevent the Parties from filing a lawsuit in a court with respect to Domain Name disputes."
''.com''
Currently, disputes over ''.com'' domain names are handled by the following domain name dispute resolution centres recognised by the Internet Corporation for Assigned Names and Numbers (ICANN), a competent authority for managing domain names:
- the World Intellectual Property Organization Arbitration and Mediation Center;
- the Asian Domain Name Dispute Resolution Centre;
- Forum (formerly known as the National Arbitration Forum);
- the Arab Center for Domain Name Dispute Resolution;
- the Canadian International Internet Dispute Resolution Centre; and
- the Czech Arbitration Court Arbitration Center for Internet Disputes.
As a rule, the Uniform Domain Name Dispute Resolution Policy (UDRP) is applicable to the adjudication of disputes arising from ''.com'' domain names. Parties that are dissatisfied with the panel's decision based on the UDRP may file a suit with a court of competent jurisdiction to suspend the implementation of the panel's decision on the basis of article 4(k) of the UDRP, which states as follows:
The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.
Rules applicable to domestic lawsuits for ''.com'' gTLD disputes
Taiwan has no dispute resolution centre for ''.com'' domain names. However, in response to the panel's decision based on the UDRP made in relation to a dispute, a party to the dispute located in Taiwan can still file a suit with a Taiwanese court. While the UDRP is not Taiwanese law, lawsuits in Taiwan over ''.com'' domain name disputes should in general proceed in accordance with the UDRP and be bound by it. The reasons for this are as follows.
UDRP is universally accepted
Applicable to ''.com'' gTLDs, the UDRP serves as a reference for dispute resolution rules stipulated for ccTLDs. The UDRP may be regarded as universally accepted. As the Internet is ubiquitous, covering all the territories of the international market, applying different rules in lawsuits in different countries, or disregarding the UDRP entirely, would lead to inconsistent handling of ''.com'' gTLD disputes globally, resulting in unfairness.
UDRP should be applicable to ''.com'' domain name disputes
In accordance with Taiwan's legal practice, the Domain Name Dispute Resolution Policy is directly applied in the adjudication of ''.tw'' domain name disputes(2) in determining whether the disputed domain name is an abusive registration. Therefore, lawsuits in Taiwan over ''.com'' domain name disputes to which the UDRP is applicable should cite ''.tw'' domain name disputes and accordingly be applicable under and be bound by the UDRP.
UDRP is integral part of private law agreement for ''.com'' domain names
The private law agreement underlying applications for domain name registration clearly states that the registrant shall abide by the ICANN's policies and the UDRP. As the registrant has agreed to such agreement, the ICANN's policies and the UDRP shall be deemed integral to such agreement. Accordingly, should the court adjudicating a ''.com'' domain name dispute find that the domain name is in violation of any of the ICANN's policies or the UDRP (ie, in violation of the provisions of the private law agreement underlying the domain name application), it shall cancel or assign such domain name in accordance with the UDRP on the basis of the autonomy of private law. This practice was recently explicitly affirmed and adopted by the Intellectual Property and Commercial Court.(3)
The Intellectual Property and Commercial Court has explicitly established(4) that the nature of the UDRP is of a private law agreement, and that disputes of ''.com'' domain names adjudicated in Taiwan should follow the UDRP in determining whether any registration is abusive. This judgment has made clear the role the UDRP plays in lawsuits over ''.com'' domain name disputes determined in a Taiwanese court. Compliance with the UDRP enables Taiwan to conform to the latest international rules and trend. Furthermore, making dispute resolution explicit and global helps domain names to become useful tools in global marketing efforts and greatly enhances the competitiveness of Taiwan's networks worldwide.
For further information on this topic please contact Audrey Liao at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected]). The Lee and Li website can be accessed at www.leeandli.com.
Endnotes
(1) 109-Ming-Shang-Shang-Zi-3.
(2) For example, Taiwan Taipei District Court, civil judgment 91-Su-Zi-5864.