Domain Name

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  • Introduction

    A domain name not only identifies a website but also functions as a soruce identifier for products or services provided through a website. A domain name is registered on a first-to-file basis, without examination with regard to prior conflicting rights on other types of source identifiers such as well-known trademarks, company names, personal name, etc. Especially, it is called as cybersquatting to register or use a domain name with bad faith intent to profit from the goodwill of a mark belonging to someone else. Therefore, disputes frequently arise between domain name registrants and owners of other source identifiers. Such disputes are resolved in the court or by the Internet Dispute Resolution Committee (IDRC), under the Act on Internet Address Resources together with the Trademark Act (TMA), Unfair Competition Prevention Act (UCPA).

  • Relevant provisions of the Act on Internet Address Resources

    The conciliation division may make a decision on conciliation, ordering the transfer of Internet addresses possessed by a respondent to an applicant or the cancellation of Internet addresses when case the use of Internet addresses registered by a respondent falls under any of the following subparagraphs under the provisions of Article 18-2 of the Act on Internet Address Resources:

    1) When the use of any Internet address by a respondent infringes rights to marks protected under the Trademark Act such as an applicant's trademark or service mark registered in the Republic of Korea;

    2) When the use of any Internet address by a respondent causes confusions with an applicant's product or business widely known in the Republic of Korea;

    3) When the use of any Internet address by a respondent damages the reputation of the name of an applicant, title, emblem or trade mark, which are famous in the Republic of Korea.

    Further, the conciliation division may make the above-mentioned decision when the registration, possession or use of Internet addresses by respondents obstructs the registration or use of Internet addresses by persons who have a legitimate source of authority, or such registration, possession or use is made for the purpose of reaping illegal profits, such as selling or lending Internet addresses to persons who have a legitimate source of authority over names, titles, emblems or trade names, etc.

    However, the conciliation division may dismiss applications when Internet addresses of respondents are the same as names, titles, emblems or trade names, over which respondents have a legitimate source of authority, or when respondents have legitimate rights to or interests in the registration or use of Internet addresses.

  • Relevant provisions of the Trademark Act (TMA)

    A holder of a trademark right and its exclusive licensee can request cancellation or transfer of a domain name registration that infringes on, or likely infringes on, their rights under the provisions of Articles 65 and 66 of the TMA.

    determine whether the registration and use of a domain name constitute a trademark infringement, one of the most critical issues is to establish whether the use of the domain name can be considered a use of the corresponding trademark. If goods or services similar to the designated goods of the registered mark are sold or advertised on the website under the domain name, the unauthorized use and registration of the domain name constitutes a trademark infringement.

  • Relevant provisions of the Unfair Competition Prevention Act (UCPA)

    Under Articles 2(1)(i) and (ii) of the UCPA, acts of using marks that may cause confusion with a mark or business well-known in Korea constitute “acts of unfair competition,” and thus are prohibited. In addition, under Article 2(1)(iii) of the UCPA, acts of blurring the distinctiveness or tarnishing the reputation of another person’s well-known mark are prohibited.

    Under Article 2(1)(viii) of the UCPA, it is prohibited to register, retain, transfer, or use a domain name for the purpose of obstructing the registration or use of a domain name by a legitimate party, or for the purpose of obtaining unjust profits such as by selling or lending the domain name to other entities. Under this provision, it is prohibited to retain a domain name similar to another person’s well-known mark without operating any website under the domain name.

  • Administrative proceeding for dispute resolution of .kr domain names

    A person wishing cancellation or transfer of the registration of a .kr domain name may file a petition with the Internet Address Dispute Resolution Committee of Korea (IDRC).

    The IDRC delivers a copy of the petition to the domain name registrant, requiring him/her to file a response within 14 days that is extensible at the request up to 14 days. Once a response is received, the panelist(s) is designated by the IDRC within 7 days from the date of response, and a decision will be made within about 14 days from the date of notification of the formation of the panelist(s). However, the review period of the panelist(s) is usually be postponed by the panelist(s) in case the arguments from both of the registrant and petitioner are submitted further.

    A party contesting the decision must file a lawsuit (or arbitration by mutual consent) within 14 days and supply a copy of the document certifying the same with the IDRC. If no such documents are filed, the decision becomes conclusive. If the petitioner prevails, he/she can request execution of the decision to the IDRC.

    In this regard, a .kr domain name cannot be registered in the name of a company or person without a registered address in South Korea. Therefore, if the petitioner is a foreign company or individual to which a .kr domain name cannot be transferred, it is advisable to arrange in advance that a Korean person or firm register the domain name on behalf of the petitioner after the cancellation of the disputed domain name.

    The flow chart for the proceeding is as follows:

  • Dispute Resolution of gTLDs

    Disputes related to a generic Top Level Domain (gTLD), such as .com .net, .org domains, can be resolved under UDRP through dispute resolution committees approved by the ICANN. IDRC is the Seoul branch office of Asian Domain Name Dispute Resolution Center (ADNDRC), which has been approved by the ICANN, and therefore it is possible to resolve disputes relating to gTLDs in IDRC.

    Y. P. Lee, Mock & Partners has abundant experiences in successfully representing clients in domain name disputes. Especially, we have had a panel for Internet address Dispute Resolution Committee and could provide clients with very specific comments and advice on whether to proceed with a petition and what the result of the petition would be.