Companies, agencies, and even individuals utilize domain names linked to their designations, names, or trademarks to improve their online awareness now that the Internet is widely accessible and international trade is common. Domain names are gradually becoming a symbol representing the website’s supplier and the goods or services shown on it, rather than merely the web address.
As a result of this trend, domain name owners are increasingly taking more precautions to secure their rights and interests against violation. However, because domain name applications are processed quickly and only require a formality examination, the holder of a prior right who suspects domain name infringement must file a separate complaint with a dispute resolution center, which will then step in to conduct a substantive examination of the domain name in question and determine whether it is abusive or infringing.
More varieties of domain names have emerged as a result of the growing demand for and development of domain name applications around the world. A rights holder who wants to make a complaint against an unfair domain name registration must first think about 2 issues:
- the dispute resolution center with which to lodge the complaint; and
- the rules on which the complaint is based.’
If the right holder seeks to file a lawsuit in a Taiwanese court in response to the decision made by the selected dispute resolution center, the regulations will play a significant role in the case. In fact, the essential difficulty in resolving domain name issues is how the regulations are applied in lawsuits. The Intellectual Property and Commercial Court have issued a civil ruling that sheds light on this issue.
This article examines “.com” domain name dispute resolution centers and the rules that govern them, as well as compares them to “.tw” domain name issues for comparison purposes.
Centers for dispute settlement and the applicable rules
The applicable rules and domain name dispute resolution centers differ depending on the type of domain name. Two prevalent forms of domain names are generic top-level domains (gTLDs) (e.g., ‘.com’) and country-code top-level domains (ccTLDs) (e.g., ‘.tw’).
In Taiwan, disputes over “.tw” domain names may be handled via dispute resolution service centers such as the Institute for Information Industry’s Science & Technology Law Institute and the Taipei Bar Association. In such cases, the Domain Name Dispute Resolution Policy will apply. Parties who are unhappy with the panel’s decision can file a lawsuit in court to have the panel’s decision put on hold, citing article 10(1) of the Domain Name Dispute Resolution Policy, which states: “The provisions of this Policy shall not prevent the Parties from filing a lawsuit in a court with respect to Domain Name disputes.”
The Internet Corporation for Assigned Names and Numbers (ICANN), a responsible body for handling domain names, now handles disputes over “.com” domain names through the following domain name dispute resolution centers:
- the World Intellectual Property Organization Arbitration and Mediation Center;
- the Asian Domain Name Dispute Resolution Centre;
- Forum (formerly known as the National Arbitration Forum);
- the Arab Center for Domain Name Dispute Resolution;
- the Canadian International Internet Dispute Resolution Centre; and
- the Czech Arbitration Court Arbitration Center for Internet Disputes.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is typically used to resolve disputes involving “.com” domain names. Parties who are dissatisfied with the panel’s decision based on the UDRP may file a lawsuit in a court of competent jurisdiction to halt the panel’s decision’s implementation, as stated in article 4(k) of the UDRP:
The mandatory administrative proceeding criteria set forth in paragraph 4 do not preclude you or the complainant from taking the matter to a court of competent jurisdiction for independent resolution before or after the mandatory administrative proceeding is started.
Domestic litigation involving the gTLD “.com” regulations
For “.com” domain names, Taiwan has no dispute resolution center. However, a party to a dispute residing in Taiwan can still file a suit in a Taiwanese court in response to the panel’s judgment based on the UDRP in regard to the dispute. While the UDRP is not Taiwanese legislation, lawsuits in Taiwan involving “.com” domain name disputes should follow the UDRP and be bound by it in general. The following are the reasons for this.
- UDRP is universally accepted
- UDRP should be applicable to ”.com” domain name disputes
- UDRP is an integral part of private law agreement for ”.com” domain names
The Intellectual Property and Commercial Court have specifically stated that the UDRP is a private law agreement and that disputes involving “.com” domain names handled in Taiwan should use the UDRP to determine whether a registration is abusive. This decision has clarified the function of the UDRP in lawsuits involving “.com” domain name disputes decided by a Taiwanese court. Taiwan can comply with the most recent international regulations and trends by complying with the UDRP. Furthermore, making dispute resolution transparent and global allows domain names to become effective tools in global marketing activities, boosting Taiwan’s networks’ global competitiveness.
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