(영문) 서울고등법원 2009. 1. 21. 선고 2008나43015 판결

The judgment of the first instance court is revoked. Alternatively, the defendant transfers the domain name "hpweb.com" to the plaintiff, or confirms that the defendant's right to claim prohibition against infringement against the domain name "hpweb.com" registered on November 23, 1999 by the plaintiff does not exist (the plaintiff added the part of the claim for confirmation of existence of the right to claim prohibition against infringement to the plaintiff and withdrawn the claim part of the claim for compensation).

Reasons

1. Basic facts

The following facts are not disputed between the parties, or can be acknowledged by considering the whole purport of the pleadings in each entry of Gap evidence 1 to 4, Gap evidence 6, Gap evidence 7-1 to 28, Eul evidence 2 to 5.

A. Status of the parties

The plaintiff is a web designer who operates the web site of the domain name "dgitcuple.com". The defendant is a corporation that has its head office in California, California and is a corporation that is composed of "hp" in relation to the products of computer hardware, surrounding equipment such as computer, such as a printer, computer software, etc., and is registered with the U.S. Patent Trademark Office.

B. The plaintiff's registration of domain name of this case

(1) On November 23, 1999, the Plaintiff registered the Internet domain name “hpweb.com” (hereinafter “the domain name of this case”) with the network solution company (NSI; hereinafter “NSI”) which is the registrar of the domain name of the United States.

B. The plaintiff's domain name of this case was circulated to "dgital cole.com", which is another website operated by the plaintiff. The main contents of the web site are the services of providing e-mail address to the members, and the members are 450 registered and possessed in advance so that they may select the domain name they want and use it as personal e-mail address, and the domain name of this case is one of such domain names.

한편, .com, .org, .net 등 일반최상위 도메인(gTLD) 이름에 대한 등록기관을 지정하는 등 인터넷주소를 관리하는 국제기구인 인터넷주소관리기구(Internet Corporation for Assigned Names and Numbers, "ICANN". 이하 ‘아이칸’이라고 한다)는 도메인이름 등록기관이 아닌 제3자와 등록자 사이에 발생하는 도메인이름의 등록과 사용에 관한 분쟁의 해결을 위하여, 통일도메인이름분쟁해결방침(Uniform Domain Name Dispute Resolution Policy, 이하 ‘분쟁해결방침’이라고 한다) 및 동 규칙(Rules for Uniform Domain Name Dispute Resolution Policy, 이하 ‘분쟁해결방침규칙’이라고 한다)에서 별지와 같은 내용의 의무적 행정절차(mandatory administrative proceeding)를 마련하고 있는데, 일반최상위 도메인이름을 등록하려는 자는 등록기관에 대하여 분쟁해결방침에 의한 분쟁의 해결에 동의하도록 되어 있고, 위 규정들은 아이칸의 인터넷 웹사이트에 공개되어 있다.

D. Disputes surrounding the domain name of this case and the decision of the National Arbitration Commission of the United States

(1) On August 3, 200, the Defendant filed an application with the Plaintiff, the holder of the domain name of this case, demanding the National Arbitration Commission of the United States of America (hereinafter “NAF”) to order the transfer of the domain name of this case to the Defendant pursuant to Article 3(b) Item 3 of the Rules on Dispute Resolution. At the time of the said application, the Defendant, as the competent court to be followed by the Defendant pursuant to Article 3(c) Item 3 of the Rules on Dispute Resolution, as the competent court of the United States of America, which is the location of the principal office of the Network Establishment, which is the registry agency of the domain name of this case. The Plaintiff asserted the above application on August 18, 200.

on September 8, 200, the State Arbitration Commission of the United States recognized that "the defendant registered 23 trademarks using the mark "hp" with the Intellectual Property Office of the United States, "the defendant uses the above mark on the computer-related products (Hadwa, software, and printer, etc.) and has a broad relationship with the global computer network known as the Internet, and the defendant's employees exceeding 100,000 persons around the world use the internal computer network known as "hpweb", and "hp" as the defendant's mark is well and well and well and well-known and well-known and well-known and well-known and well-known and well-known and legally highly protected by law." In accordance with Article 4 (a) of the Dispute Resolution Policy, the plaintiff's domain name of this case is identical or similar to the defendant's mark, and (2) the plaintiff's web site has no rights or legitimate interests in relation to the domain name of this case, and (3) the plaintiff's economic presumption and presumption of the plaintiff's use of the domain name of this case was presumed to be the plaintiff's act.

Article 4(k) of the Dispute Settlement Policy, the Plaintiff filed the instant lawsuit with the court of first instance (Seoul District Court) on September 18, 200 within 10 business days after the decision of the instant case. However, the network solution, the registrar of the instant domain name, was selected from the court of competent jurisdiction over the U.S. Virginia and Heron, which is a legal ground for the location of the principal office of the network solution, at the time when the Defendant filed a motion under the Dispute Settlement Policy, pursuant to Article 3(b) x iii of the Rules at the time when the Defendant filed a motion under the Dispute Settlement Policy. Thus, the court of first instance of this case did not have the jurisdiction over the Plaintiff to file a lawsuit to suspend the execution of the decision of this case. Accordingly, the court of first instance of this case transferred the domain name of this case to the Defendant on September 29, 200.

2. Whether the Plaintiff’s claim for confirmation of non-existence of infringement is legitimate

As the selective claim of this case, the plaintiff did not have the right to seek injunction against infringement, such as the cancellation and transfer of the registration of the domain name of this case, even under the dispute resolution policy and the laws of Korea, and the defendant did not have the right to seek injunction against infringement against the plaintiff. The plaintiff alleged that the defendant transferred the domain name of this case and infringed the plaintiff's right to the domain name of this case. The defendant first sought confirmation that there was no right to seek injunction against infringement against the domain name of this case against

However, the lawsuit for confirmation is allowed when the plaintiff's right or legal status is disputed and the claim for confirmation of legal relationship is the most effective and appropriate means to resolve the dispute. As seen earlier, as long as the domain name of this case has already been transferred to the defendant according to the decision of this case, the claim for confirmation of non-existence of the domain name of this case cannot be deemed an effective and appropriate means to recover the plaintiff. Furthermore, even if the plaintiff is ruled to confirm that there is no claim for prohibition of infringement against the domain name of this case, the registrar can not transfer the domain name of this case already transferred to the defendant to the plaintiff by the above confirmation judgment, not the execution judgment, in the interpretation of Article 3 of the dispute resolution policy of this case. Thus, the plaintiff's lawsuit for confirmation of non-existence of the plaintiff's claim for prohibition of infringement cannot be viewed as unlawful because there is no benefit of confirmation.

3. Determination on the claim for transfer of the domain name of this case

A. The plaintiff's assertion

The plaintiff is the cause of the claim of this case. ① The plaintiff is not entitled to transfer the domain name of this case to the defendant because it constitutes an unlawful or unfair transfer of the domain name of this case to the defendant, and ② the defendant's transfer of the domain name of this case is not identical or similar to the "hpweb" of this case, and the defendant's transfer of the domain name of this case to the defendant is not identical or similar to the defendant's transfer of the domain name of this case to the defendant, since the plaintiff's transfer of the domain name of this case to the defendant is not the one of this case's transfer of the domain name of this case to the defendant without the plaintiff's right and interest in the plaintiff's use of the domain name of this case since the plaintiff's transfer of the domain name of this case to the defendant is not the one of this case's transfer of the domain name of this case to the defendant without the plaintiff's right and interest in the plaintiff's use of the domain name of this case, since the plaintiff's transfer of the domain name of this case to the defendant is not the plaintiff's right and interest in this case.

B. Determination on quasi-legal norms

㈎ 분쟁해결방침이 이 사건의 판단기준이 될 수 있는지 여부

A. The dispute resolution policy prepared by A.S. is incorporated into the terms and conditions of registration agreed between the registrar and the registrant of a domain name, and where a dispute arises between the registrant of the domain name and a person holding rights to trademark or service mark (hereinafter “third party”), the administrative procedure of the registrar to promptly determine the maintenance, cancellation, transfer, etc. of the registration and to improve the appropriateness of the registration administration. It is not only before or after the commencement or termination of the mandatory administrative procedure under the dispute resolution policy, but also during the process, the court with international jurisdiction plans to finally resolve the dispute over the domain name (see Article 4(k) of the dispute resolution policy and Article 18(a) of the Dispute resolution policy). Thus, in the compulsory administrative procedure, the dispute resolution policy of the case is not binding on the registrar of the domain name and its registrant and the third party, and the court shall not examine and determine the domain name of this case, unless there are special circumstances such as agreement between the registrant of the domain name and the third party as the basis for the dispute resolution outside the mandatory administrative procedure.

【Governing Law】

The plaintiff asserts that the transfer of the domain name of this case to the defendant is illegal or unreasonable and that the defendant has no authority to hold the domain name of this case. Thus, the transfer of the domain name of this case to the defendant is null and void. Accordingly, the defendant claims that the plaintiff is obligated to transfer the domain name of this case to the plaintiff for restoration of its original state, and therefore, it seems that the defendant is liable to transfer illegal acts or unjust enrichment

According to Article 13 of the former Conflict of Laws (amended by Act No. 6465 of Apr. 7, 2001, hereinafter the same), the establishment and validity of statutory claims arising from tort or unjust enrichment shall be governed by the law of the place where the facts underlying the tort occurred. The place where the facts underlying the tort occurred shall include not only the place where the tort was committed, but also the place where the facts underlying the tort occurred, and the place where the unjust enrichment occurred means the place where the profits accrue.

Since the plaintiff could not use the domain name of this case in the Republic of Korea due to the transfer registration of the domain name of this case, the law of the Republic of Korea applies to the establishment and validity of tort. Thus, the defendant's act of transferring the domain name of this case to the dispute resolution agency as a result of the mediation cannot be deemed illegal unless there are special circumstances.

However, if there is no substantive right to seek the prohibition of the use of the domain name of this case to the defendant at the time of the transfer registration of the domain name of this case, even if the transfer was made by the mediation decision of the dispute resolution agency, the above transfer is not a legal cause and there is room for establishing unjust enrichment to the defendant. According to the provisions of Article 13 of the former Conflict of Laws, the establishment and validity of the claim for return of unjust enrichment in the conflict of laws shall be governed by the law of the place where the profit occurred. The location where the defendant possessed the domain name of this case in this case and the profit occurred by the defendant shall be the United States, which is the location of the defendant, and the establishment and validity of the claim for return of unjust enrichment of this case shall be deemed the law of

C. Whether a claim for return of unjust enrichment under the U.S. law is established

(1) Whether unjust enrichment under the U.S. Federal Trademark Act is established

First of all, the provisions of the U.S. Federal Trademark Act that stipulate the return of domain names transferred by the registrar are as follows.

본문내 포함된 표 15 U.S.C. §1114(2)(D) (v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant. - 제(ⅱ)(Ⅱ)항에 규정된 방침에 따라 중지, 사용금지 또는 이전된 도메인이름의 등록자는 상표권자에게 통지하고 등록자에 의한 도메인이름의 등록 또는 사용이 이 법 하에서 위법이 아님을 입증하는 민사소송을 제기할 수 있다. 법원은 도메인이름 등록자에게 도메인이름의 재활성화, 도메인이름의 반환을 포함하는 가처분을 허가할 수 있다. (ii) An action referred to under clause (i)(I) is any action of refusing to register, removing from registration, transferring, temporarily disabling, or permanently canceling a domain name-- (II) in the implementation of a reasonable policy by such registrar, registry, or authority prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another's mark. - 같거나, 혼동을 일으킬 정도로 유사하거나, 타인의 상표를 희석화하는 도메인이름의 등록을 거절하는 등록기관 등의 합리적인 방침의 실행을 위하여…, 도메인이름의 등록을 거절하거나, 제거하거나 이전, 일시 정지 또는 영구 삭제하는 행위

According to the above legal provisions, the plaintiff can seek the return of the domain name of this case pursuant to the provisions of §1114(2)(D)(v) of the U.S. Trademark Act by proving that his registration or use of the domain name of this case does not violate the U.S. federal Trademark Act. Therefore, we examine the part of the U.S. Federal Trademark Act which specifically regulates the domain name of this case.

본문내 포함된 표 15 U.S.C. §1125(d)(1)(A) (d) Cyberpiracy prevention (1)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that-- (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; - (1)(A) 상표권자가 제기한 민사소송에서, 그 상품이나 서비스와 무관하게, 다음에 해당하는 자는 배상책임을 진다. (i) 그 상표로부터 이익을 얻으려는 악의로써, (ii) 다음에 해당하는 도메인이름을 등록, 거래, 사용한 경우 (I) 도메인이름의 등록 당시 식별력을 가진 상표인 경우, 그 상표와 같거나 혼동을 일으킬 정도로 유사한 것 (II) 도메인이름의 등록 당시 저명한 상표인 경우, 그 상표와 같거나 혼동을 일으킬 정도로 유사하거나 그 상표를 희석화하는 것

According to the above, in order to recognize the registration or use of a domain name as an infringement of trademark rights under the U.S. Trademark Act as illegal, ① the registrant has a bad faith to gain profits from the trademark, ② the trademark holder or well-known at the time of the registration of the domain name, ③ the trademark is identical with, or similar to, the trademark, or similar to, the trademark at the time of the registration of the domain name, or the dilution of the trademark (the dilution is limited to a well-known trademark), and thus, it is necessary to examine whether the requirements of this case are met.

㈎ 피고 상표의 식별력 내지 저명성 여부

In full view of the purport of the arguments in Eul evidence Nos. 4 and 7, the defendant registered 23 trademarks using the "hp" mark with the U.S. Patent Trademark Office, and the above mark was first used in the trade in December 24, 1968, and the defendant had 600 business networks around 120 all over the world, and the amount of sales in the fiscal year 1999 reached US$ 42.4 billion and the amount of sales in the 1st century and the PC sales order in the computer system and the PC sales order, such as the UNIX server, the above mark is recognized as being widely used in the whole world including the United States, since it can be recognized that the defendant's trademark has distinctiveness at the time of the registration of the domain name of this case as well as that of the trademark of this case.

㈏ 이 사건 도메인이름과 피고의 상표의 동일·유사 여부

Cases of the U.S. Supreme Court (representatively Pizzeria Uno Corp. v. Temple, 747F.2d 1522 (4)) include the elements to be considered to recognize the possibility of confusion of trademarks under the U.S. federal Trademark Act, such as ① strongness or distinctiveness of trademarks, ② similarity of two marks, ④ similarity of goods or services displayed by trademarks, ④ similarity of facilities used by the parties for business, ⑤ similarity of advertisements by the parties, ⑤ similarity of the defendant's intention, and 7 actual confusion, etc., as well as support, partnership, etc.

The domain name of this case and the defendant's "hp" mark are not completely identical to the domain name of this case, but the defendant's mark has been used in computer hardware, software, and printer, etc. as a strong distinctive trademark, and the part of "hpweb" excluding the trademark of this case among "hpweb.com" refers to the Internet network. Thus, the domain name of this case is highly likely to be thought that Internet users are related to the Internet's possession or support of the web site indicating the domain name of this case with the defendant's trademark in the Internet network. Thus, the domain name of this case and the defendant's trademark of this case are similar to the trademark of this case to the extent that confusion is caused.

㈐ 원고의 악의 유무

§ 1125 § 1(d)(1)(B) of the Federal Trademark Act lists the following items as an element to determine whether the domain name registrant's bad faith:

본문내 포함된 표 (B)(i) In determining whether a person has a bad faith intent described under subparagraph (a), a court may consider factors such as, but not limited to (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; - 그 도메인이름으로 접속되는 사이트에서 등록인이 그 상표를 선의를 가지고 비상업적으로 정당하게 사용했는지 여부 (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; - 소비자들을 상표권자의 온라인사이트로부터 상업적 이익 또는 상표를 훼손하거나 비난하려는 의도를 가지고 사이트의 출처, 후원, 제휴 또는 보증관계에 있는 것과 같은 혼동 가능성을 일으킴으로써 상표에 내포된 신용을 손상할 가능성이 있는 도메인이름으로 접속되는 사이트로 유인하려는 등록자의 의도 (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and - 각 당사자의 상품 또는 서비스와 관계없이 도메인이름의 등록 당시 식별력이 있는 타인의 상표와 동일하거나 혼동을 일으킬 정도로 유사하거나, 또는 도메인이름 등록시 주지 저명한 타인의 상표를 희석화하는 것을 알면서 다수의 도메인 네임을 등록 또는 취득하였는지 여부 (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. (ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. - 등록인의 도메인이름 사용이 정당하거나 합법적이라고 믿었고 그렇게 믿을만한 정당한 이유가 있었다고 법원이 판단하는 사건에서는 (A)항에 기재된 악의가 있다고 판단할 수 없다.

In light of the fact that the service offered by the Plaintiff on the web site of “dgircup.com” which was circulated in the domain name of this case is providing e-mail address to its members and appears to have been opened for commercial purposes (the Plaintiff may know the fact that the Plaintiff collects service charges from its users regarding the provision of e-mail address according to the evidence No. 7-28 of this case), as seen above, there is possibility of confusion similar to the Defendant’s trademark, and the Plaintiff has circulated the domain name of this case to “dgitcup.com” service it provides with the Defendant’s trademark, and it appears that the Plaintiff had the purpose of increasing its visitors by using the Defendant’s trademark. The Plaintiff appears to have used 450 domain names, including the domain name of this case, and the registration and use of the domain name of this case at least meet the elements of the above sub-paragraph (V) and (III), and thus, the Plaintiff’s use of the domain name of this case is not recognized as legitimate or reasonable as determined by the above sub-paragraph (ii).

㈑ 소결론

Therefore, since the registration and use of the domain name of this case by the plaintiff constitutes an unlawful act that infringes on the defendant's trademark right pursuant to §1125 (d) (1) (A) (d) of the US Federal Trademark Act, the plaintiff may not seek the return of the domain name of this case against the defendant, in accordance with §114 (2) (D) (v) of the US Federal Trademark Act.

D. Whether unjust enrichment under the State law of the United States has been established

As seen earlier, since the place where benefits using the domain name of this case accrue is the location of the defendant, it is considered whether unjust enrichment has been established under the law of the State of California in which the defendant's headquarters is located.

㈎ 컨버전(Conversion) 청구

The elements to establish a consortium claim under California law are ① the right to possess the Plaintiff’s property, ② the profit from the illegal act or disposal of the Plaintiff’s property against the Plaintiff’s property or gain from the Defendant’s illegal act or disposal, ③ the occurrence of damages (see, e.g., Porsen, 68 Cal.App.4th 1062, 80 Cal.R.2d 704).

However, in accordance with the U.S. law, the defendant's act of transferring the domain name of this case according to the mediation result cannot be deemed unlawful unless there are special circumstances. Thus, the defendant's act does not meet the above requirements. Thus, the plaintiff's claim for transfer of the domain name of this case is not established without considering the remaining issues.

㈏ 부당이득(Unjust Enrichment) 청구

The unjust enrichment under the U.S. law refers to obtaining unjust profits against the fundamental principles, equity, conscience, etc. of the law due to the loss of another person's property, etc., and the "unfair" refers to a situation in which it is not morally correct to obtain unjust profits at illegal or other person's expense (see, e.g., Supreme Court Decision 2005Da1650, Sept. 1, 2005). The Court has revised the application for unjust enrichment to 200 Da365, Sept. 16, 2006, which permits the application for 200 Da305, Nov. 16, 2006.

Therefore, as seen earlier, insofar as the Defendant received transfer of the domain name of this case by the decision of this case pursuant to the dispute resolution policy that the Plaintiff consented to the registration of the domain name of this case and such transfer appears to be valid under the U.S. Federal Trademark Act, the Defendant cannot be deemed to have obtained unjust benefits by receiving transfer of the domain name of this case.

【Court Decision】

Therefore, the plaintiff's claim for the transfer of the domain name of this case on the premise that the defendant's transfer of the domain name of this case constitutes an unjust benefit is without merit.

4. Conclusion

Therefore, the plaintiff's lawsuit on the confirmation of existence of the claim for prohibition of infringement added in the trial prior to the remand as selective claim is dismissed. The plaintiff's selective claim on the transfer of the domain name of this case among the plaintiff's selective claims is dismissed as it is without merit. The judgment of the court of first instance is just in conclusion, and the plaintiff's appeal disputing it is dismissed as it is without merit. It is so decided as per Disposition.

[Attachment]

Judges Park Dong-dong (Presiding Judge)

심급 사건

-서울중앙지방법원 2001.12.14.선고 2000가합67360

-서울지방법원 2001.12.14.선고 2000가합67360

-서울고등법원 2002.9.25.선고 2002나4896

-대법원 2005.1.27.선고 2002다59788

-서울고등법원 2005.11.8.선고 2005나23409

-대법원 2008.4.24.선고 2005다75071

서울고등법원 2009.1.21.선고 2008나43015

-대법원 2011.5.26.선고 2009다15596

원심판결