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Using Another's Trademark in Domain Names to Mislead the Internet Users into Gambling Websites is deemed as Bad Faith in Domain Name Disputes
Just like doorplates to houses, domain name is one of the major identifiers for internet users. Most of the time, domain names with distinctive terms enjoy higher exposure. Therefore, it is not uncommon for illegal pornography or gambling websites to use well-known trademarks in their domain names in attempt to redirect the internet users to these websites. This kind of conduct not only deprives the trademark owners' right to operate legitimate websites, but also tarnishes the brand image that the trademark owners have heavily invested in. Under the current practice in Taiwan, 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: (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. In a recent decision regarding the domain name seagen.tw, the panel of the dispute resolution provider Taipei Bar Association held that using another's trademark in domain names to mislead the internet users into gambling websites was deemed as bad faith. The Complainant in this case was a US biotechnology company. The Complainant claimed that it enjoyed a high reputation and its pharmaceutical products had been approved and sold in over 70 countries. In addition, the Complainant stated it had long been using the term "SEAGEN" as company name and had obtained trademark registration throughout the world while the Registrant never obtained any trademark with the term "SEAGEN" in Taiwan and the Registrant's name had no relation to "SEAGEN". Furthermore, the Complainant pointed out that the Registrant used the domain name to promote online gambling services to internet users outside of Taiwan while restricted the access of internet users in Taiwan to the domain name. The panel in this case firstly clarified that, according to the Dispute Resolution Policy, when making a determination of bad faith intent of the Registrant, the following circumstances may be taken into consideration: (1) The Registrant registered or acquired the Domain Name primarily for the purpose of gaining from the Complainant or a competitor thereof, by selling or renting the Domain Name or by some other means, a profit in excess of the expenses related to registering the Domain Name; (2) The Registrant registered the Domain Name for the purpose of preventing the Complainant from using a trademark(s), mark(s), personal name, business name, or other emblem in a Domain Name registration; (3) The Registrant registered the Domain Name primarily for the purpose of disrupting the business activities of a competitor; (4) The Registrant, for purposes of profit-seeking, has intentionally sought to induce or mislead network users to visit the Registrant's web site or other on-line location by creating confusion with the trademark(s), mark(s), personal name, business name, or other emblem(s) of the Complainant. With regards to the above provisions, the panel emphasized that the determination of bad faith intent should not be limited to the given circumstances or a particular time frame. The panel further specified that the Complainant may demonstrate the Registrant's bad faith by providing evidence that the domain name has been "registered" in bad faith or the domain name was being "used" in bad faith. Judging from the Registrant's conduct, the panel held that the Registrant intended to profit from the domain name seagen.tw, and took advantage of the likelihood of confusion between the domain name and the Registrant's trademark and company name to mislead the internet users into its website. Accordingly, the domain name seagen.tw was both registered and used in bad faith by the Registrant and should be transferred back to the Complainant.