[1] In a case where goods identical or similar to the designated goods of the registered trademark are sold on a website established under the same or similar domain name as the registered trademark, whether it constitutes an infringement of trademark rights even without indicating the registered trademark directly within the website or indicating as if it seems related to the trademark (affirmative)

[2] The case holding that the use of a domain name by crowdfunding constitutes a trademark use under the Trademark Act

[1] Where a web site is opened after registering a domain name identical or similar to the registered trademark and sells goods identical or similar to the designated goods of the registered trademark, if the web site directly indicates the registered trademark within the web site or sells goods identical or similar to the designated goods of the registered trademark, the consumers visiting the web site by leading the same or similar domain name as the registered trademark even though the trademark does not indicate it within the web site, may be mistaken for goods identical or similar to the designated goods of the registered trademark sold on the web site as goods of the registered trademark right holder. In such a case, the registration or use of the

[2] The case holding that if a domain name is entered in the webbroer's address, the use of the domain name by so-called crowdfunding that the domain name can be immediately moved to another web site, and its substance does not differ from that of opening a web site in the first domain name and selling the goods, it constitutes trademark use under the Trademark Act

[1] Articles 2(1) and 66 of the Trademark Act / [2] Articles 2(1) and 66 of the Trademark Act

Csspanty Co., Ltd. (Attorneys Cho Jae-ap et al., Counsel for the defendant-appellant)

Maria Doz. Maria Doz. (Attorney Yang Young-young et al., Counsel for the plaintiff-appellant)

December 18, 2003

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

It is confirmed that the plaintiff's duty to cancel the domain name of March 24, 2003 by the decision of cancellation of the domain name "www.Momnaco.co.kr" (hereinafter referred to as "the domain name of this case") does not exist.

1. Basic facts

A. The Plaintiff imported young children's food from U.S. Cordo Co., Ltd. in Japan, and then registered the domain name "www.co.kr" with the Korea Internet Information Center, a foundation which is an institution specializing in domestic Internet address management, and sold the above over-cindo product on the website opened in that name. On May 14, 2001, the Plaintiff had registered the domain name of this case with the above Korea Internet Information Center and then entered it into the Internet webbroer's address and address.C.kr's homepage (hereinafter referred to as the "www.k's connection between the above method of Internet address and the defendant). (After the dispute occurred with the defendant, the Plaintiff released the aforementioned crowdfunding.

B. As of February 23, 1910, the Defendant, from around 1899, had been established as a juristic person as of February 23, 1910, had sold various kinds of foods, such as fruits, beverages, etc. in Japan using the mark "MORINAGA", which is a Roman mark for Japanese language development. From around 1989 to around 1994, the Defendant registered the trademark and service mark, such as the attached list 1 to 7, in Korea, from around 1996 to around 199, registered the trademark and service mark in Korea, and then sold its own products through Macro compact from around 2001 to Macro.

C. The domain name dispute mediation rules (hereinafter referred to as "the dispute mediation rules of this case") that the plaintiff would follow when the dispute related to the domain name arises while registering the domain name of this case with the Korea Internet Information Center, which is the foundation of the foundation, are as follows.

Article 2 (Definitions of Terms) The definitions of terms used in these provisions shall be as follows:

1. The term "applicant" means a person who has filed an application for dispute mediation in connection with the registered domain name;

2. The term "applicant" means a registrant of a domain name for which a dispute has been requested;

4. The term "Committee" means the domain name dispute mediation committee;

6."Mediation Panel" means a panel of one or three mediators, composed of a particular dispute conciliation panel;

Article 3 (Application for Dispute Mediation) (1) Any person whose rights or legitimate interests are infringed upon by the law of the Republic of Korea or a treaty in which the Republic of Korea has acceded to the registration and use of the domain name of another person may file an application with the Committee for mediation to seek the cancellation or transfer of the domain name concerned.

Article 6 (Composition of Conciliation Panel) (2) The Committee shall, at the option of the parties, form one conciliation Panel or three conciliation Panel.

Article 8 (Trial by the Conciliation Division) (3) Where the registration or use of a domain name of the respondent falls under any of the following subparagraphs, the conciliation division may determine that the registration or use of the domain name of the respondent is in violation of the rights or legitimate interests of the applicant protected by the law of the Republic of Korea or the treaty in which the Republic of

1. Where the use of domain name by the respondent infringes on an applicant's right to the trademark or service mark registered in the Republic of Korea;

2. Where the use of a domain name by the respondent causes confusion with an applicant's goods or business widely known in the Republic of Korea;

3. Where the use of a domain name by the respondent impairs the distinctiveness or reputation of an applicant's name, title, trademark, service mark, trade name, etc. widely known in the Republic of Korea;

4. Where the domain name of the respondent is identical or similar to the applicant's name, name, trademark, service mark or trade name widely known in the Republic of Korea or in a foreign country, and the primary purpose of the registration of the domain name of the respondent is to prevent the applicant from registering the domain name in his/her name, name, trademark, service mark or trade name;

4. Where the domain name of the respondent is the same as the name, title, trademark, service mark or trade name that he/she has a legitimate right, or where there is no self-identification ability, or where it constitutes a legitimate use, the conciliation division, notwithstanding the provisions of the preceding paragraph, may determine that the applicant’s rights or legitimate interests are not infringed.

Article 12 (Effect, etc. of Mediation Decision) (1) A party dissatisfied with a Mediation Decision may submit to the registration agent a statement of mediation decision and implement the Mediation Decision if it has not filed a suit with a court within 14 days from the date on which he/she received the notice of mediation decision or filed a petition for arbitration under a party agreement.

D. On February 22, 2003, the defendant filed an application for dispute mediation against the plaintiff for cancellation of the domain name of this case on the ground that the domain name of this case registered by the plaintiff is identical to the trademark or service mark of this case and the products sold on such web site are identical to or similar to the designated goods of the registered trademark. Three mediation groups organized upon the plaintiff's request are identical to the defendant's domestic trademark, and "MORINAGAA", which is the main part of the domain name of this case, is identical to the defendant's wwb.co.D, which is the goods displayed or sold on the plaintiff's professional Internet shopping mall, and the plaintiff seems to be widely recognized as the defendant's domestic-known trademark's domestic-known trademark-related goods, such as the defendant's trademark "MINAGAAAA" and the defendant's domestic-known trademark-related goods are not identical to the defendant's domestic-registered goods, and the plaintiff's domestic-known trademark-related goods were not identical to the defendant's domestic-registered goods.

E. The Plaintiff filed the instant lawsuit within 14 days from the date of the above decision.

[Based on Recognition] Uncontentious Facts, Gap evidence 1 to 3, Eul evidence 1 to 11, evidence 18-1 to 11, evidence 42, evidence 51, evidence 52, the purport of the whole pleadings

2. Judgment on the plaintiff's claim

A. The plaintiff's assertion

(1) (A) The domain name is merely an Internet address, and thus its registration and use cannot be deemed as the use of a trademark under the Trademark Act.

(B) The Plaintiff did not establish a web site using the domain name of this case and sell and exhibit specific products, but rather put the domain name of this case into the web site operated by the Plaintiff in the event of entering it into the web brider’s address. Thus, such use does not constitute the use of a trademark under the Trademark Act.

(C) There is no indication of the Defendant’s trademark or trade name on the “www.bell.co.kr website operated by the Plaintiff, and there is no infringement on the Defendant’s trademark right or service mark right (hereinafter referred to as “trademark right”).

(D) Since the defendant's trademark "MORINA" is a common surname in Japan, its trademark registration is invalid under the Trademark Act, and its registration is revoked because it is not used for three years after its registration. Thus, even if it is currently registered as a trademark, the defendant cannot claim that the plaintiff is a trademark right holder.

(2) The Defendant’s registered trademark is not widely known to the general consumers in Korea, and even if consumers enter the domain name of this case and visit the Plaintiff’s website, it is clearly indicated that the Plaintiff’s products are Japanese products. Therefore, there is no concern for confusion between the source of goods or the business entity, or impairing the distinctiveness or reputation of the Defendant’s mark.

(3) The domain name of this case, which was first registered by the Plaintiff, is recognized as the first registrant, and it cannot be determined that there was an unlawful purpose for the registration of domain name solely on the ground that the domain name of this case, which was first registered,

(4) The defendant cannot obtain the registration of the domain name of this case since it is not a Korean corporation, and it cannot prevent the use of the domain name of this case against the plaintiff.

(b) Markets:

(1) Appropriateness of the application of Article 8(3)1 of the Dispute Mediation Regulation (Infringement of the registered trademark right)

(A) Whether the registration and use of a domain name constitutes the use of a trademark under the Trademark Act

① The purport of allowing the Internet users to indicate the domain name, which is a combination of characters corresponding to the original number of the computer, is to enhance the distinctiveness of the web site by using the name in the name of the computer as the address of the computer. Even if the domain name has the function as the computer address, it is well known that the current Internet users have the function of distinguishing the registrant's name, goods, and services. There are many cases where most trademark owners have the function of distinguishing the registrant's name, goods, and services. According to the above function of the domain name, most of the trademark owners intend to register their trademark in the domain name, and ordinary users are also try to connect the domain name and the trademark right holder's tendency to think about the domain name. In full view of the fact that there is a tendency to find the domain name ".c.r. or.com" among the Internet users with the name of the trademark in addition to the method of using the search engine, it can be excluded from the use of the domain name as a trademark in the name of the trademark law (excluding the use of the trademark as a trademark).

(2) However, even if the domain name can be used as a trademark under the Trademark Act, it can be determined whether it constitutes the use of a trademark under the Trademark Act, considering the specific use attitude of the web site opened under the domain name, rather than the registration and use itself of the domain name.

The method of using a web site is: ① the registration of the domain name is only made and the web site does not carry on any business; ② the web site is opened after the registration of the domain name is made and operated for nonprofit regardless of the sale of the designated goods of the registered trademark included in the domain name; ③ the sale of goods or the business that is not related to the designated goods of the registered trademark; ④ the sale of goods or the business that is identical or similar to the designated goods of the registered trademark can be divided into the case of the designated goods of the registered trademark; ④ the above, the domain name is not used under the Trademark Act or is not likely to cause confusion as to the origin of the goods; ④ the above, although the trademark is not indicated within the web site or it is not used under the Trademark Act because there is no possibility that consumers visiting the web site by leading to the designated goods of the registered trademark identical or similar to the registered goods of the registered trademark that are sold on the web site can be mistaken as the goods of the registered trademark right holder. In such case, the registration and use of the domain name constitutes trademark under the Trademark Act.

(b) the crowdfunding and trademark use;

The plaintiff adopted a so-called crowdfunding method that the plaintiff can immediately move the domain name of this case to the web site it opened. Since the movement between the web site by such circulation takes place technically and technically between them, it is difficult for consumers to feel moving the domain name of this case to the web site it opened by the plaintiff through the domain name of this case. The consumers who ordinarily entered the domain name of this case in the web beer's address and address, and it is easy for them to think that the web site indicated on the screen is a web site they want to find as the result of the plaintiff's inputting's input of the domain name, and even if they come to know of moving from the web site corresponding to the domain name of which they entered to another web site, it is hard for consumers to feel moving the domain name of this case to the web site. Considering the fact that there is no economic, human, and organizational connection between the web site corresponding to the domain name of this case's input and the web site, even if the plaintiff opens and uses the domain name of this case, there is no way to use the domain name of this case.

(C) Whether the use of the domain name of this case and trademark infringement were infringed

As seen above, the domain name of this case is www. Gmnag.co.r. The defendant's registered trademark is used independently or in combination with the design of Roma's "MINGA". It is recognized that "Morinaga, the main part of the domain name of this case, is identical to the defendant's registered trademark in appearance and title, and it is recognized that the plaintiff's sale goods, can be dymnags, Ambrogs, shacket, vegetet, veget, veget, rice bamboo, veget, veget, veget, veget, veget, veget, veget, veget, veget, veget or veget, similar to the defendant's designated goods, goods identical to the defendant's 183262, goods identical to the defendant's registered trademark, goods identical to the defendant's veget, drug veget, veget, 8044440.

(D) Judgment on the Plaintiff’s assertion

① The Plaintiff asserted that “MORINAA”, which is an essential part of the Defendant’s trademark, is merely a common surname in Japan and thus cannot be registered as a trademark since it is a name that can not be registered as a trademark. However, whether it is commonly used as a trademark should be determined on the basis of the country where the above registered trademark right has its effect. However, even if the name of “MORAAAA” is a common surname in Japan, it cannot be said that it is a common surname in Korea. Thus, the Plaintiff’s assertion based on this premise is without merit.

② The Plaintiff also asserted that the Defendant’s registered trademark was not used for three years, and that the Plaintiff could not prohibit the use of the Plaintiff’s domain name on the basis of the trademark right to be revoked. However, even if the Plaintiff failed to use the registered trademark for three years and caused the cause of revocation, it is not subject to revocation if the Defendant re-enters its use before the revocation trial is filed. As seen in the above 1.-B., as seen in the above, since the Defendant exported and sells its products through Macro Cable from around 1996 to Korea through Macro Cable from around 2001, and thus, even if the Defendant did not use the registered trademark for three years before the revocation trial is filed, the Plaintiff’s assertion premised on the Defendant’s ground of revocation of the registered trademark is without merit.

③ The Plaintiff asserted that the use of the domain name of this case cannot be prevented because the Defendant was not a Korean corporation, and thus the Plaintiff cannot be registered as “.co.kr.,” but Article 8(3)1 of the Dispute Mediation Regulation merely prevents the use of the domain name similar to the registered trademark as part of the claim for exclusion of interference based on the right to use the registered trademark. Since it is irrelevant to the Defendant’s qualification for registration of the domain name of this case, the Plaintiff’s above assertion is without merit.

(e) Conclusion

As seen above, as long as the Plaintiff infringed the Defendant’s right to registered trademark because it sells goods identical or similar to the designated goods of the registered trademark using the mark identical or similar to the Defendant’s registered trademark, the decision of the domain name dispute mediation committee ordering the cancellation of the domain name of this case based on Article 8(3)1 of the Dispute Mediation Regulations, which is the ground for cancellation of the domain name registration, is justifiable. As such, the Plaintiff has the duty to cancel the domain name of this case (or the duty to cancel the domain name of this case). The Plaintiff’s assertion that the Plaintiff did not have the duty to cancel the domain name of this case is unfair, and therefore, it is without merit

3. Conclusion

Therefore, the plaintiff's claim of this case is dismissed, and it is so decided as per Disposition.

Judges Kim Jong-tae (Presiding Judge)