Newsletter
Establishment of Dispute Resolution Centers & Rules Applicable to Dispute Resolution
Nowadays, with widely accessible internet and vigorous international trade, companies, agencies and even individuals have all used domain names relating to their designations, names, or trademarks to boost their recognition online. No longer just the web address of a website, a domain name has 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 formality examination, a prior right holder suspecting domain name infringement has to separately file a complaint with a dispute resolution center, 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 have led to more types of domain name worldwide. A right holder seeking to file a complaint against an abusive domain name registration first needs to consider two basic issues: selecting the dispute resolution center to lodge the complaint, and deciding on the rules on which the complaint is based. If, after a decision is rendered by the selected dispute resolution center, the right holder seeks to file a suit in a court of Taiwan in relation to the decision, the foregoing rules will take on significance in litigation. In fact, how the rules are factored in lawsuit considerations is the core issue in addressing domain name disputes. As the recently rendered Civil Judgment 109-Ming-Shang-Shang-Zi-3 of the Intellectual Property and Commercial Court provides insight into this very issue and is of critical relevance, it is worth a close scrutiny.
We begin our discussion of disputes over abusive ''.com'' domain name registrations by brief looking at ''.com'' domain name dispute resolution centers and rules applicable thereto, with comparisons to ''.tw'' domain name disputes for reference.
II. Dispute resolution centers and rules applicable thereto
Domain name dispute resolution centers and rules applicable thereto vary according to type of domain name. Generic top-level domains (gTLDs; e.g. ''.com'') and country code top-level domains (ccTLDs; e.g. ''.tw'') are two common types of domain name:
(1) ccTLD: ''.tw''
Disputes over ''.tw'' domain names in Taiwan may be handled by such dispute resolution service centers as Science & Technology Law Institute (STLI) under Institute for Information Industry (III) and Taipei Bar Association; the Domain Name Dispute Resolution Policy shall be applicable. One 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 Paragraph 1 of Article 10 of the aforesaid Policy:
The provisions of this Policy shall not prevent the Parties from filing a lawsuit in a court with respect to Domain Name disputes.
(2) gTLD: ''.com''
Currently, disputes over ''.com'' domain names are handled by the following domain name dispute resolution centers recognized by the Internet Corporation for Assigned Names and Numbers (ICANN), a competent authority for managing domain names:
1. WIPO Arbitration and Mediation Center
2. Asian Domain Name Dispute Resolution Centre (ADNDRC)
3. The National Arbitration Forum (NAF)
4. Arab Center for Domain Name Dispute Resolution (ACDR)
5. Canadian International Internet Dispute Resolution Centre (CIIDRC)
6. 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. One 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:
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.
III. Rules applicable to domestic lawsuits for ''.com'' gTLD disputes
From the foregoing, it can be learned that Taiwan does not have a dispute resolution center 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 court of Taiwan. While the UDRP is not Taiwan's law, lawsuits in Taiwan over ''.com'' domain name disputes should in general proceed in accordance with the UDRP and be bound by it, for the following three reasons:
(1) The UDRP is universally accepted.
Applicable to the ''.com'' gTLD, the UDRP serves as a reference for dispute resolution rules stipulated for ccTLDs. One could regard the UDRP as universally accepted. As the internet is ubiquitous, covering all the territories of the international market, application of different rules, or disregarding the UDRP, in lawsuits in different counties would lead to inconsistent handling of ''.com'' gTLD disputes globally, resulting in unfairness.
(2) As demonstrated by previous ''.tw'' domain name disputes, the UDRP should be applicable to ''.com'' domain name disputes.
In accordance with Taiwan's legal practice, oftentimes the Domain Name Dispute Resolution Policy is directly applied in the adjudication of ''.tw'' domain name disputes (e.g. Taiwan Taipei District Court - Civil Judgment 91-Su-Zi-5864) 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.
(3) The UDRP is an integral part of the 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 ICANN's policies and the UDRP. As the registrant has agreed to such agreement, 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 any violation of ICANN's policies or the UDRP (i.e. 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 has been explicitly affirmed and adopted by the Intellectual Property and Commercial Court (citing the recently rendered Civil Judgment 109-Ming-Shang-Shang-Zi-3 of the Intellectual Property and Commercial Court).
IV. Conclusion
In sum, Civil Judgment 109-Ming-Shang-Shang-Zi-3 of the Intellectual Property and Commercial Court has established through explicit argument that the nature of the UDRP is of a private law agreement, and that disputes of ''.com'' domain name 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 court of Taiwan. 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.