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Domain Name Dispute Resolution Complaints May be Refiled If New Evidences and Facts are Presented
Traditionally, the disputes regarding the domain names registered under the Country Code Top Level (ccTLD) ".tw" may be addressed through complaints to the Fair Trade Commission, arbitrations or regular litigations in Taiwan. As a more efficient and speedy alternative, trademark owners may also seek settlements through the domain name dispute resolution providers recognized by Taiwan Network Information Center (TWNIC), namely Taipei Bar Association or Institute for Information Industry, Science & Technology Law Institute (STLI). Under the Domain Name Dispute Resolution Policy of the TWNIC, anyone who registers a ".tw" domain agrees to submit to the proceeding before the above the domain name dispute resolution providers.
According to Article 5 of the Policy, a complainant may, on the grounds that the below-listed elements exist in respect of the registrant's domain name registration, file a complaint with a dispute resolution provider pursuant to the Policy:
(1) The Domain Name is identical or confusingly similar to a trademark(s), mark(s), personal name, business name, or other emblem(s) of the Complainant; and
(2) The Registrant has no rights or legitimate interests in respect of the Domain Name; and
(3) The Registrant has registered or used the Domain Name in bad faith.
The resolution mechanism under the Policy does not bar complainants from raising regular litigations. Therefore, if a complainant does not satisfy the decision made by the above the domain name dispute resolution providers, they may still seek traditional remedies from the courts. However, if a complaint is dismissed by one of the providers, whether the complainant can refile a complaint against the same registrant with respect to the same domain name with another provider, still remains unclear in practice.
Under the current Policy, there is no provision addresses the procedural principle of "ne bis in idem", which prevents the same parties from disputing a claim which has been adjudicated in a prior, definitive and binding decision. In the past decision made by the provider Taipei Bar Association in the case Amazon.tw, the panel had acknowledged that the principle of "ne bis in idem" should be applied in the domain name disputes under the Policy. In a recent decision regarding the domain name Baidu.com.tw, the panel of the provider Taipei Bar Association also relied on the same principle and stated that domain name dispute resolution complaints may be refiled only if new evidences and facts are presented.
The case was first filed to the resolution provider STLI in February, 2018. The Complainant contended that the Registrant used the domain name which was identical to the complainant's trademark and further alleged that the Registrant used the domain name to direct the users to a paid adult chat service website, which should be an inference of bad faith. In addition, the Complainant said that the Registrant should have known the existence of the Complainant when it registered the domain name as the Complainant was the biggest Chinese language search engine service provider in the world. Responding to these allegations, the Registrant argued that the domain name was available since 2000, which suggested that the Complainant did not care about the domain name. In addition, the Registrant claimed to use the domain name for several years and had millions of registered members, which showed that the public was familiar with the Registrant's service. The panel of STLI agreed that the domain name was identical or confusingly similar to the Complainant's trademark. The panel further stated that the Registrant's adult chat service would tarnish the Complainant's trademark, so the Registrant had no rights or legitimate interests in respect of the domain name. However, the panel noted the Registrant applied for the domain name around the same time as the Complainant applied for its trademark in mainland China and had been paying the renewal fee since registration, suggesting that the Registrant had no bad faith in registering the domain name. Accordingly, the panel denied the complaint based on the absence of bad faith during registration.
In June 2018, the Complainant refiled the same complaint against the same Registrant with another dispute resolution provider Taipei Bar Association. Before its substantive analysis, the panel of Taipei Bar Association pointed out that the principle of "ne bis in idem" should be applied in domain name dispute resolution complaints, and the complaints may be refiled if new evidences and facts are presented. In this case, the Complainant had provided the report of a user of the Complainant's service and 9 new evidences. Therefore, even though "ne bis in idem" was applied, the panel in this case may still proceed to a decision on the merits.
As to its substantive analysis, the panel of Taipei Bar Association construed the bad faith element differently than the panel of STLI. The panel of Taipei Bar Association pointed out that, even if the Registrant did not submit the registration in bad faith, the bad faith element under the Policy may still be satisfied if the Registrant continued to "use" the domain name in bad faith "after" the registration. The panel further specified that, the Taiwan Intellectual Property Office had declared that the Complainant's trademark was well-known in 2009 and the Complainant also applied its trademark in 2011, therefore the Registrant should have known the existence of the Complainant at least in 2009. In addition, judging from the overall look and feel of the Registrant's website (such as intentionally adopting Simplified Chinese and using the Complainant's trademark in Chinese on the Registrant's chat service), the Registrant should have the intent to cause confusion to the relevant consumers. For the foregoing reasons, in accordance with Article 5 of the Policy, the panel orders that the disputed domain name be transferred to the Complainant.