Domain name is the URL. Each URL is unique, and there will not be two identical URLs. Currently, registers and manages of the .tw domain name are responsible by Taiwan Network Information Center (TWNIC). The dispute resolution agencies of the .tw domain name is responsible by Science & Technology Law Institute and Taipei Bar Association.
To determine whether the registration or use of a domain name infringes on the trademark rights of others, we must first know two points:
01. The domain name is "first-to-file" basis.
Even with trademark rights, the domain names may be registered in advance due to needs of others.
02. Cyber squatter
There is trademark squatter and there is cyber squatter, too. According to "first-to-file" basis and the uniqueness of the domain name, some people may register the domain name preemptively and up for grabs. After understanding the above two points, let's synthetically determine whether the registration or use of the website constitutes "trademark use". And the registered trademark is a general trademark or a well-known trademark.
01. General trademark
1. If the domain registration date or the actual operation date of the domain registrant is earlier than the trademark registration date, there is usually little chance of retrieving the domain name.
2. If the domain owner starts the operation after the trademark application date and uses the domain name as the focus of marketing, and the business undertaking overlaps with the trademark registration class, it may be determined that the domain owner used other's trademark for marketing. The trademark infringement liability shall be borne, and the trademark owner may exclude the infringement through Trademark Law Article 69.
02. Well-known trademark
According to the provisions of Article 70, paragraph 1, subparagraph 2: knowingly using words contained in another person’s well-known registered trademark as the name of a domain name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark. The trademark owner may exclude infringements in accordance with Trademark Law Article 69.
▲Trademark Law Article 70, paragraph 1, subparagraph 2: knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.
▲Exclusion, prevention and damages of infringement; time limit to demand damages. A proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to stop or prevent such infringement.
When making a demand pursuant to Paragraph 1, the proprietor is entitled to demand for destruction of infringing articles and the materials or implements used in infringing the trademark. However, the court may order other dispositions as it considers necessary after taking into account the need for proportionality between the seriousness of the infringement and the interests of third parties.
The proprietor is entitled to demand the infringer who knowingly, or with reasonable grounds to know, infringed such trademark rights to pay the proprietor damages.
The rights to demand referred to in the preceding paragraph shall become extinguished if not exercised within two years from the date on which the proprietor become aware of the damage and the person liable for damages. This right shall also become extinguished if it is not exercised within ten years from the time of infringement.
In addition to through Trademark Law to handle, there could also handling through DN Dispute Resolution Policy Article 5. The Domain Name is identical or confusingly similar to a trademark(s), mark(s), personal name, business name, or other emblem(s) of the Complainant. A Complainant may file a complaint to TWNIC. The expert team of the agency decides whether to cancel or transfer a registered Domain Name. The current complaint handling agency is the Science & Technology Law Institute and Taipei Bar Association.
▲A Complainant may, on the grounds that the below-listed circumstances exist in respect of the Registrant's Domain Name registration, file a complaint with a Provider pursuant to this Policy:
1. The Domain Name is identical or confusingly similar to a trademark(s), mark(s), personal name, business name, or other emblem(s) of the Complainant;
2. The Registrant has no rights or legitimate interests in respect of the Domain Name;
3. The Registrant has registered or used the Domain Name in bad faith.
Cross-Strait Agreement on Intellectual Property Right Protection and Cooperation
Trademark Law of the People's Republic of China (2019 Amendment)
DN Dispute Resolution Policy
