Domain Name Dispute Res 18311 by ps94506


									                                             Domain Name Dispute Resolution in Taiwan

                                                       By Peter J. Dernbach and Jesimy Yu

           How should the owner of a famous trademark deal with the unauthorized registration
           and use of its famous mark as a domain name in Taiwan? While relief through
           Taiwan’s court system is an option to resolve a domain name conflict involving a
           famous trademark, this process is often lengthy and expensive. Generally, the most
           efficient means of canceling the registration or obtaining rights to such infringing
           domain names is through the Taiwan Network Information Center’s (TWNIC) dispute
           resolution proceedings.

           Under Taiwan’s Telecommunications Act, The Directorate General of
           Telecommunications (DGT) is responsible for matters related to the registration and
           administration of Internet Addresses and Internet Domain Names. The DGT created
           the TWNIC as a non-profit legal entity to handle the administrative work related to
           Internet Domain Names. TWNIC is also authorized by the Internet Corporation for
           Assigned Names and Numbers (ICANN) to administer .tw domain name registration
           and IP address allocation in Taiwan. TWNIC has established the Taiwan Network
           Information Center Domain Name Dispute Resolution Policy (“Policy”,
 , which follows the ICANN Uniform
           Domain Name Dispute Resolution Policy (UDRP). TWNIC has authorized two
           dispute resolution bodies, the Science & Technology Law Institute (STLI) and the
           Taipei Bar Association (TBA), to adjudicate domain name disputes.

           The Policy provides that a trademark owner may file a complaint over a disputed
           domain name with either dispute resolution body seeking cancellation or transfer of
           the domain on the basis of the following grounds:

           (1) The domain name is confusingly similar to a trademark, mark, personal name,
           business name, or other emblem of the complainant;

           (2) The registrant has no rights or legitimate interests with respect to the domain
           name; and

           (3) The registrant has registered or used the domain name in bad faith.



Attorneys at Law of Taiwan and Foreign Legal Affairs        12F No. 86 Chongcing South Road Section 1, Taipei, Taiwan 10045   TEL +886 (0)2 2311 2345
本國與外國法律事務律師事務所                                              博仲法律事務所 10045 台北市重慶南路一段86號12樓                                     FAX +886 (0)2 2311 2688
           Many of the STLI’s dispute resolution panelists are law school professors or staff. All
           TBA panelists are licensed attorneys. Panelists from the two bodies are by and large
           similarly competent and qualified.

           Upon receipt of a complaint, the provider will forward a copy to the registrant of the
           disputed domain name requesting a response within 20 days of receipt. In the interim,
           the body will appoint a single panelist or a three-member panel to examine the
           dispute, in accordance with the wishes of the complainant, who bears the cost of the
           domain name dispute proceedings. As the fees for a three-member panel are double
           that for a single panelist, in many cases, the complainant opts for the matter to be
           heard by a single panelist. Resolution of a domain name dispute through a TWNIC
           dispute resolution proceeding usually takes between 45 to 90 days. Although the STLI
           has more overall experience in handling domain name dispute resolution cases, in our
           experience, the process through STLI typically takes between two to three months,
           whereas the dispute resolution through the TBA typically takes approximately one-
           and-a-half months. As such, we generally recommend proceeding with dispute
           resolution at the TBA.

           If the dispute resolution body decides to cancel or transfer the disputed domain name,
           the registrant of the disputed domain name has ten working days from receipt of the
           body’s determination to file a civil action requesting confirmation on the issue of
           legal interest in the disputed domain name. If the registrant fails to take action,
           TWNIC will implement the provider’s decision to either cancel or transfer the
           domain name. In practice, few registrants actually pursue civil actions given the
           related costs and the courts’ usual reluctance to reverse TWINIC rulings. Although
           TWNIC decisions are not binding on the courts, the courts often respect the TWNIC
           decisions with regard to domain name disputes. For example, civil courts refer to
           TWNIC rulings when determining whether a registrant party to a civil complaint has
           acted in bad faith in using another’s mark as its domain name.

           It is often advisable for the trademark owner to send the registrant of the disputed
           domain name a cease-and-desist letter before filing a complaint with TWNIC. In the
           letter, the rights owner may demand the other party to transfer the disputed domain
           name outright rather than face legal action. The letter may also serve as evidence of
           bad faith should the registrant demand unreasonable compensation for transfer of the
           disputed domain name.

           If you have any questions regarding domain name dispute resolution in Taiwan or
           would like any more information, please feel free to contact us at



Attorneys at Law of Taiwan and Foreign Legal Affairs   12F No. 86 Chongcing South Road Section 1, Taipei, Taiwan 10045   TEL +886 (0)2 2311 2345
本國與外國法律事務律師事務所                                         博仲法律事務所 10045 台北市重慶南路一段86號12樓                                     FAX +886 (0)2 2311 2688

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