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| IP Newsletter | Winter 2013/14 |
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TRADEMARK & DOMAIN NAME |
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A Defeat for Cybersquatters |
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The Supreme Court of Korea confirmed that the lack of fame of a trademark in Korea could no longer be used as an excuse by cyber squatters in cases involving top level domain names, including .com, and .org (Case No. 2011Da577661, rendered on September 12, 2013). Korean cyber squatters often argued in civil actions filed under the Korean Internet Address Resource Act ("IARA"), that the foreign owner of a famous trademark abroad did not own legitimate rights to demand the transfer or de-registration of a domain name, if the mark was not also famous in Korea. |
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Cheerleaders and adult content website |
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In the specific case before the Supreme Court, the Korean registrant had registered the domain name www.nca.com and was seeking a confirmatory judgment that the US entity, owner of the NCA trademark, famous in the United States, did not have legitimate rights. NCA is the abbreviation of the National Cheerleaders Association and is famous in the United States in connection with the organizing of cheerleading camps as well as the sale of cheerleader related clothing. The US entity did not own any trademark registrations in Korea and could not prove fame in Korea. |
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However, the bad faith of the registrant in this case was blatant. Under the www.nca.com domain name, the registrant had set up various keywords referring to cheerleading and offered links to the website of a competitor of the US entity as well as an adult content website. Also, the domain name registration had been obtained after the US entity had obtained a registration for the NCA trademark in the US. |
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Lack of fame in Korea: not the only criteria |
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The IARA provides that a party who has legitimate rights to a domain name may seek de-registration or transfer thereof against another party who registers, maintains or uses the same for bad faith purposes. |
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Until now, even if a foreign entity owned a famous trademark, if this trademark was not also well-known in Korea or registered in Korea, it was difficult to convince Korean courts that the foreign owner had legitimate interests in a domain name comprised of or including such trademark under the IARA. |
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With this decision, the Supreme Court confirmed that, although the lack of registration or fame in Korea are important elements to be taken into consideration, these facts alone are not sufficient to rule that a party does not have any legitimate interest to a domain name in Korea. Fame abroad may be sufficient, especially if the bad faith can clearly be established as in this case. |
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