[1] The legal nature of the "united domain name dispute resolution policy" by the Internet Address Management Organization (ICN) and whether the above policy has binding force governing the registrant of the domain name and the third party outside of the mandatory administrative procedure (negative)

[2] The meaning of "the place where a cause occurred" in the tort or unjust enrichment under Article 13 of the former Conflict of Laws Act

[3] In a case where a U.S. corporation, which is a holder of trademark right to the mark "hp", filed an application for dispute resolution with the Dispute Resolution Agency pursuant to the Uniform Name Dispute Resolution Policy established by the Internet Address Management Agency (ICN), against A (Korean) who is the registrant of the domain name "hpweb.com", and as a result, Gap filed a claim for damages arising from tort against the act of transferring the domain name, the case holding that the above act of transfer registration under the laws of the Republic of Korea, which is the applicable law, is not unlawful

[4] In a case where the United States corporation, which is a trademark holder of the mark "hp", filed an application for dispute resolution with the Dispute Resolution Agency in accordance with the Uniform Name Dispute Resolution Policy established by the Internet Address Management Organization (ICN) for the registration of the domain name "hpweb.com" against Gap, who is the registrant of the domain name "hp", and transferred the above domain name according to the result, the case holding that since there is room for establishing unjust enrichment in the absence of a substantive right of the trademark holder at the time of the transfer registration, since there is room for establishing unjust enrichment in accordance with Article 13 of the former Conflict of Laws Act, the validity of Gap's claim for the return of the domain name

[1] In the case where a dispute arises between the registrar of the domain name and the person who has the right to the trademark or service mark (third party) as incorporated into the terms and conditions of registration agreement between the registrar of the domain name and the registrant of the domain name, the International Organization for Internet Address Management (hereinafter “Korea Internet Address Management Organization”) is an administrative procedure of the registrar in order to improve the appropriateness of the registration administration by promptly making a decision on the maintenance, cancellation, transfer, etc. of the registration, and it is not binding on the registrar of the domain name and the third party, and the court of the case should not examine and determine the domain name in the case in question, unless there are special circumstances between the registrant of the domain name and the third party, and the third party, and it is not binding on the registrant of the domain name and the third party, and it is not binding on the registration agency of the domain name and the third party, unless there are special circumstances between the third party and the third party.

[2] According to Article 13 of the former Conflict of Laws (amended by Act No. 6465 of Apr. 7, 2001), in case of conflict of laws with foreign elements, 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 causing the tort occurred. The place where the facts causing the tort occurred refers to not only the place where the tort was committed but also the place where the damage occurred, and the place where the facts causing the tort occurred in unjust enrichment refers to the place where the profit occurred.

[3] In a case where a U.S. corporation, which is a holder of trademark right to the mark "hp", filed an application for dispute resolution with the Dispute Resolution Agency in accordance with the Uniform domain Name Dispute Resolution Policy established by the Internet Address Management Agency (ICN), against the registrant of the domain name "hpweb.com", and as a result, Gap filed a claim for damages arising from tort against the act of transferring the domain name, the case holding that the law of the Republic of Korea shall be the law of the Republic of Korea on the ground that the above transfer registration cannot be used domestically due to the above transfer registration, and that the above transfer registration under the law of the Republic of Korea is not unlawful

[4] In a case where the United States corporation, which is a holder of trademark right to the mark "hp", filed an application for dispute resolution with the Dispute Resolution Agency in accordance with the Uniform Name Dispute Resolution Policy established by the Internet Address Management Organization (ICN) for the registration of a domain name "hpweb.com" against the Republic of Korea who is the registrant of the domain name "hp" and transferred the domain name as a result of the registration, the case holding that the validity of the claim for the return of the domain name of Gap should be determined on the grounds that there is no substantive right for the holder of trademark right to seek the prohibition of the use of the domain name at the time of the registration transfer, even if the registration transfer was made in accordance with the conciliation decision made by the Dispute Resolution Agency, since there is no legal cause and there is room for establishing unjust enrichment, since the registration of transfer is in accordance with the conciliation decision made by the Dispute Resolution Agency.

[1] Article 65 of the Trademark Act, Article 2 subparagraph 1 (h) and Article 4 of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Article 13 of the former Conflict of Law (wholly amended by Act No. 6465 of Apr. 7, 2001) (see Articles 31 and 32 of the current Private International Act) / [3] Article 750 of the Civil Act, Article 13 of the former Conflict of Law (wholly amended by Act No. 6465 of Apr. 7, 2001) (see Article 32 of the current Private International Act) / [4] Article 741 of the Civil Act, Article 13 of the former Conflict of Law (wholly amended by Act No. 6465 of Apr. 7, 2001) (see Article 31 of the current Private International Act)

[1] Supreme Court Decision 2004Da72457 decided Feb. 1, 2008 (Gong2008Sang, 282) / [2] Supreme Court Decision 93Da18167 decided Jan. 28, 1994 (Gong194Sang, 818)

Plaintiff (Attorney Lee Jae-soo, Counsel for plaintiff-appellee)

Aftermatht-Pukercom (Attorneys Lee Im-soo et al., Counsel for the defendant-appellant)

Supreme Court Decision 2002Da59788 Delivered on January 27, 2005

Seoul High Court Decision 2005Na23409 Delivered on November 8, 2005

The judgment below is reversed, and the case is remanded to Seoul High Court.

The grounds of appeal are examined.

1. As to the binding force of dispute settlement procedures

The "unit domain name dispute resolution policy" (hereinafter referred to as "Dispute resolution policy") is an administrative procedure of the registrar in order to improve the appropriateness of the registration administration, where a dispute arises between the registrant of the domain name and the person who has the right to the trademark or service mark (hereinafter referred to as "third party") as incorporated into the contents of the registration agreement agreed between the registrar and the registrant of the domain name and the registrant of the domain name, and the registration agency in order to promptly decide on the maintenance, cancellation, transfer, etc. of the registration. 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 proceeding, the court is ultimately scheduled to resolve the dispute concerning the domain name, so long as there are no special circumstances between the registrant and the third party and the registration agency in question (see Article 4(k) of the Dispute Resolution Policy, Article 18(a) of the Dispute Resolution Policy). Thus, it is not an administrative procedure that the court has an obligation to examine and decide the domain name in question and the third party to the registration and the registration agency in question.

Nevertheless, the court below determined that the plaintiff's registration and use of "hpweb.com" (hereinafter "the domain name of this case") satisfies the requirements of Article 4 (a) of the Dispute Resolution Policy in relation to the defendant's mark "hp" (hereinafter "the defendant's mark") and thus the transfer of the domain name of this case to the defendant is illegal or unreasonable. It is obvious that the court below erred in the misapprehension of legal principles as to the binding force of the dispute settlement procedure. The plaintiff's ground of appeal pointing this out has merit.

2. As to whether the registration and use of the domain name of this case violates the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”).

Article 2 subparagraph 1 (h) of the Unfair Competition Prevention Act was newly established by Act No. 7095 on January 20, 2004 and enforced as of July 21, 2004. According to the facts duly admitted by the court below, while the plaintiff registered and used the domain name of this case on November 23, 1999, the registration agency of the domain name of this case has already registered and transferred the domain name of this case to the defendant on September 29, 200, prior to the enforcement of the above provision pursuant to the decision of the dispute resolution agency, prior to the transfer of the domain name of this case, the registration agency of the domain name of this case had already registered and transferred the domain name of this case to the defendant at the time of the transfer registration, it cannot be said that at the time of the transfer registration, the plaintiff has the right to claim prohibition against the registration and use of the domain name of this case by the

Nevertheless, the court below determined to the effect that the transfer of the domain name of this case to the defendant is not illegal or unjust since the defendant's right to use the domain name of this case is recognized pursuant to Article 2 subparagraph 1 (h) of the Unfair Competition Prevention Act. The court below erred by misapprehending the legal principles as to Article 2 subparagraph 1 (h) of the Unfair Competition Prevention Act. The plaintiff's ground of appeal pointing this out has merit.

3. As to the applicable law of tort or unjust enrichment, and its establishment

According to Article 13 of the former Conflict of Laws (amended by Act No. 6465, Apr. 7, 2001; hereinafter the same) of the former Conflict of Laws (amended by Act No. 6465, Apr. 7, 2001; hereinafter the same), the establishment and effect of statutory claims arising from tort or unjust enrichment shall be governed by the law of the place where the cause of the tort or unjust enrichment occurred. The place where the cause of the tort occurred refers to the place where the cause of the tort or unjust enrichment occurred, including not only the place where the tort was committed but also the place where the damage occurred (see Supreme Court Decision 93Da18167, Jan. 28, 1994).

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 the right to seek the prohibition of the use of the domain name of this case is not acknowledged 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 against the defendant. The court below should determine the applicable law in accordance with the provisions of Article 13 of the former Conflict of Laws as to the establishment and validity of the claim for return of unjust enrichment, and examine the validity of the claim for return of the domain name of this case by applying the applicable law. However, the court below determined that the plaintiff cannot seek the return of the domain name of this case against the defendant on the grounds as stated in its reasoning. The judgment of the court below is erroneous in the misapprehension of legal principles as to

4. Conclusion

Therefore, without further examining the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Sung-tae (Presiding Justice)