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”, http://www.twnic.net.tw/english/dn/dn_04.htm), 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 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.

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.

For more information regarding domain names and related dispute resolution in Taiwan please contact Peter Dernbach at pdernbach@winklerpartners.com and Jesimy Yu at jesimy@winklerpartners.com.