(1) Introduction
(2) Relevant provisions of the TMA
(3) Relevant provisions of the UCTSA
(4) KDRP
(5) Administrative proceeding for dispute resolution of .kr domain names
(6) Dispute Resolution of gTLDs
 
(1) Introduction
A domain name not only identifies a website but also functions as an identifier of a source of 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 trademarks. 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 relevant laws and rules including the Trademark Act (TMA), Unfair Competition Prevention and Trade Secret Protection Act (UCTSA), and Korean Domain Name Dispute Resolution Policy (KDRP).

(2) Relevant provisions of the 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.

To 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.

(3) Relevant provisions of the UCTSA

Under Article 2(1)(i) and (ii) of the UCTSA, 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 UCTSA, acts of blurring the distinctiveness or tarnishing the reputation of another person’s well-known mark are prohibited.
Article 2(1)(i) and (ii) applies to the case of using a domain name to sell or advertise goods or services similar to those related to another person’s well-known mark. Article 2(1)(iii) applies to the case of using a domain name for goods or services unrelated to, or having inferior quality than, the goods and services for which another person’s well-known mark is used, thereby blurring the distinctiveness of or tarnishing the reputation of the well-known mark. However, generally, Articles 2(1)(i) to (iii) may not apply to the act of merely registering a domain name without using it.
Under Article 2(1)(viii) of the UCTSA, 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.

(4) KDRP

Under Article 9 of the KDRP, if the use of a domain name falls under any of the followings, the IDRC panel may decide that the domain name registration be cancelled or transferred to a legitimate party:

(i) The use of a domain name infringes another person’s right on a trademark or service mark registered in Korea.

(ii) The use of a domain name causes confusion with another person’s goods or services well known in Korea.
(iii) The use of a domain name blurs the distinctiveness of or tarnishes the reputation of another person’s name, mark, or trade name, etc., well known in Korea.
(iv) The registration, retention, or use of the domain name is for the purpose of obstructing the registration or use of the domain name by a legitimate party, or for the purpose of obtaining unjust profits such as by selling or lending the domain name to a legitimate party.

(5) 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, term that is extensible up to one month. When a response is received, the panelist(s) reviews the case and issues a decision within about 14 days.

A party wishing to contest the decision must file a suit (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.

(6) 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.