[1] The legal nature of the uniform domain name dispute resolution policy of the International Organization for Internet Address Management (ICN) and whether the above policy has the effect of binding the substantive legal relationship between the registrant of the domain name and the third party beyond the mandatory administrative procedure (negative)

[2] In a case where a foreign financial company Gap, which has a trademark or service mark related to "CCF, acquired a famous foreign financial holding company, and registered a domain name created by combining the trade name of the above financial holding company and "CCF," with the International Internet Address Management Organization (ICN), and Gap claimed the prohibition of the use of the above domain name against "B based on the Uniform domain Name Dispute Resolution Policy, the case holding that the above dispute resolution policy has no binding force regulating the substantive legal relationship between "A" which is a trademark right holder and "B" which is a trademark right holder, and the registrant of the domain name

[1] The Uniform domain Name Dispute Resolution Policy established by the International Organization for Internet Address Management (UN) for the Resolution of Disputes (UN) is incorporated into the terms and conditions of registration agreed between the registrar and the registrant of the domain name and the holder of the right to the trademark or service mark. In the event a dispute arises between the registrant of the domain name and the third party, the registration agency's administrative procedures to improve the appropriateness of the registration administration by making a prompt decision on the maintenance, cancellation, transfer, etc. of the domain name, and the above dispute resolution policy has no binding force to regulate substantive legal relations with regard to the registration and use, etc. of the domain name. Thus, the third party has no right to directly examine and determine the domain name of this case in accordance with the above dispute resolution policy, not the requirements of administrative procedures and the requirements of the above dispute resolution policy.

[2] The case holding that in a case where a foreign financial company Gap, which has a trademark or service mark related to "CCF, acquired a famous financial holding company of a foreign country, and registered a domain name created by combining "CCF" with the trade name of the above financial holding company Eul and "CCF, Gap applied for the commencement of a mandatory administrative procedure to require Eul to transfer the above domain name to the international dispute resolution agency based on the Uniform domain Name Dispute Resolution Policy and sought confirmation that Eul has no right to seek the prohibition of use of the domain name, the above dispute resolution policy does not have binding force regulating the substantive legal relationship between the company Eul (third party) which is a trademark holder and Eul which is the registrant of the domain name, and thus, the subject of the court's deliberation and determination is not whether the above financial company satisfies the requirements of the dispute resolution policy, but can request the prohibition of use of the domain name as the above domain name because Eul had the above domain name registered in its trademark right.

[1] Article 65 of the Trademark Act, Articles 2 and 4 of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Article 65 of the Trademark Act, Articles 2 and 4 of the Unfair Competition Prevention and Trade Secret Protection Act

Plaintiff

Cret Social Francs (Attorneys Yang Young-ok et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2004Na10697 delivered on November 24, 2004

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

The grounds of appeal are examined.

1. Fact-finding and judgment of the court below

A. The court below acknowledged the following facts in full view of the admitted evidence.

(1) The Defendant, a company established in France in 1917, is a financial company that has more than 660 branches in France and operates individual and corporate financial business. At present, the Defendant applied for and registered multiple trademarks or service marks related to “CCF” in each of the world countries including France. On August 31, 1989, the Defendant applied for and registered the service marks composed of “CCF” as designated service business, etc.

(2) Upon the report on April 2, 200 on the Internet domain name "cfhsbcc.com" and "hsc.com" (hereinafter referred to as "each domain name of this case") to the International Internet Address Management Organization for the Internet Address (OBC Holdings Plc.), the non-party is a financial holding company that operates approximately 7,00 branches in 80 countries around the world including Korea. The non-party company decided to acquire the defendant company. The non-party company was reported on April 2, 200 to take over the defendant company. The non-party, the husband of this case, reported on April 2, 200 to the domestic daily newspaper, "CFhsbc.com" and "hsc.c.com.com" (hereinafter referred to as "the domain name of this case") to the plaintiff, the plaintiff's domestic domain name registration system of this case, the non-party 1, the plaintiff of this case, as the plaintiff, the plaintiff registered the Internet domain name of this case.

(3) In order to settle the dispute over the registration and use of the Internet domain name in a prompt and influence of the disputes, Academy's Uniform domain Name Dispute Resolution Policy (Uniform Dr. Name Dr. hereinafter "Dispute Resolution Policy") and these Rules and the Rules ("Dispute Resolution Policy"), which had the registrar adopt the Rules for Resolution of Disputes, and accordingly, the Han River system shall be deemed to have consented to the registration of the domain name under Article 1 of the Terms and Conditions for Registration of the domain name, and the translation of the Policy shall be published on the website of Han River system. The non-party and the plaintiff agreed to each of the above domain name registration terms and conditions prepared by the Han River System in the course of registering and transferring the domain name of this case.

(4) The main contents of the dispute resolution policy relating to the instant case are as follows:

(A) Article 3 of the Dispute Resolution Policy (Revocation, Transfer, and Change of Registration)

The registrar shall cancel, transfer, or change the registration of a domain name if it is ordered by a court or an arbitral agency having legitimate jurisdiction over the case (b) or if it is decided to cancel, transfer, or change the registration of the domain name in the compulsory administrative procedure (Mandory Administ) to which the registrant becomes a party, under which the registrar has become a party.

(B) Article 4 (Compulsory Administrative Procedures) of the Dispute Resolution Policy

(1) Paragraph (a) (Applicable Dispute): A registrant of a domain name shall comply with a mandatory administrative procedure in cases where a third party (hereinafter referred to as "applicant") claims a right against a dispute mediation agency on the following grounds in accordance with the Rules on Dispute Settlement Policy. In that procedure, the applicant must prove the following three requirements:

The domain name is similar to that of the applicant as an identical or confused with the trademark or service mark entitled to the applicant.

(B) The registrant of the domain name has no right or legitimate interest in the domain name.

The domain name is registered and used for illegal purpose.

② Paragraph (k) (Effect of Use of the domain name): The mandatory administrative procedure provided for in Article 4 does not prevent a person who has registered the domain name or an applicant from filing a lawsuit with a court having a legitimate jurisdiction to resolve a dispute separate from the mandatory administrative procedure after the commencement or termination of the mandatory administrative procedure. If the administrative panel decides to cancel or transfer the domain name, the registrar of the domain name shall take ten (10) days from the time it is notified by the dispute mediation agency of the decision. The registrar of the domain name against the applicant within ten (10) days from the time it is notified by the dispute mediation agency of the decision and shall execute the decision. If the applicant fails to receive an official document from the competent court which stated that the applicant has filed a lawsuit against the applicant pursuant to Article 3 (b) (xiii) of the Rules on Dispute Resolution, the registrar shall suspend the execution of the decision, if the official document has been submitted within 10 (10) days, the agency shall not dismiss the decision and shall not have any right to use the registered person's right to use the registration until the registration is dismissed or withdrawn.

(5) On January 29, 2002, the Defendant applied for the commencement of compulsory administrative procedure against the Plaintiff, the registrant of each domain name of this case, in accordance with the Dispute Resolution Policy and the Rules on Dispute Resolution. On April 30, 2002, the Defendant decided to order the Plaintiff, the registrant of each domain name of this case, to transfer the domain name of this case to the International Intellectual Property Organization for Arbitration and Conciliation (WIPO). On April 30, 2002, the administrative panel in charge of the arbitration center decided to order the Plaintiff to transfer the domain name of this case to the Defendant.

(6) After the above decision, on May 27, 2002, the Han River System notified the defendant that it will transfer the domain name of this case to the defendant without filing a lawsuit with the competent court within 10 business days. The plaintiff filed the lawsuit of this case with the Seoul Central District Court on June 4, 2002.

B. Based on the above facts, the court below determined that the plaintiff's right or legitimate interest in each domain name of this case was not established in the form of a web site using the domain name of this case, and since the plaintiff is deemed to have consented to the dispute resolution policy in accordance with the terms and conditions of the registration of the domain name of this case when transferring the domain name of this case, the plaintiff has a duty to comply with the administrative procedure of the arbitration center, upon the defendant's application, so long as the mandatory administrative procedure on each domain name of this case was commenced at the World Intellectual Property Organization Mediation Center, and the defendant has a right to "CCF mark" or a trademark or service mark related to "CCF" and the defendant has a right to directly use the domain name of this case to the extent that it is likely to cause confusion with the mark of "CCF" and it does not start specific business. Since each domain name of this case has been registered and used for the purpose of obstructing the registration of the defendant's domain name of this case through unfair points, the plaintiff's right to directly use the domain name of this case against the plaintiff.

2. Judgment of the Supreme Court

However, we cannot accept the above determination by the court below for the following reasons.

A. The dispute resolution policy prepared by “Ack” is merely an administrative procedure of the registrar to improve the propriety of registration administration when a dispute arises between the registrant of a domain name and a person (hereinafter “third party”) who has a right to a trademark or service mark (hereinafter “right to a trademark, etc.”) as incorporated into the terms and conditions of registration agreed upon between the registrant of the domain name and the registrant of the domain name. Barring special circumstances, the dispute resolution policy does not have binding force that regulates the substantive legal relationship concerning the registration and use of the domain name as to the right to the trademark, etc. and the right to use the domain name. Thus, the dispute resolution policy cannot be asserted that a third party has substantive rights to directly file a claim with the registrant of the domain name according to the requirements set out in the dispute resolution policy beyond the mandatory administrative procedure, and the concept of trademark or service mark right prescribed by the governing law is ambiguous, and the court is not in accordance with the legal principles and regulations of each country prior to the commencement of the dispute resolution policy on the domain name as well as the legal principles and regulations of Article 6(3) of the Paris Convention.

B. The lawsuit of this case is a defect in the decision of the administrative panel in charge of the arbitration center to order the plaintiff to transfer the domain name of this case to the plaintiff in accordance with the dispute resolution policy, and the plaintiff's execution of the decision is suspended. The dispute resolution policy, which is the provision on the registration administration procedure of the domain name registration, can be applied to the mandatory administrative procedure according to the agreement between the plaintiff and Han River system, separate from the fact that it can be applied in accordance with the mandatory administrative procedure, it cannot be binding to regulate the substantive legal relationship between the plaintiff and the defendant. Thus, whether the plaintiff's registration and use of each domain name of this case satisfies the requirements such as cancellation and transfer of the dispute resolution policy, etc. of the registration of the domain name of this case can not be examined and determined in this case. The defendant's right to his own trademark, etc. satisfies the legal requirements that can claim the plaintiff to prohibit the use of each domain name of this case.

Nevertheless, the court below determined that the defendant has the right to directly file a claim against the plaintiff for the prohibition of the use of each domain name of this case in accordance with the Dispute Resolution Policy, because the dispute resolution policy, which is only a provision on the registration administrative procedure of the domain name registration agency, has binding force regulating the substantive legal relationship between the plaintiff and the plaintiff. Such judgment of the court below is erroneous in the misapprehension of legal principles as to the binding force of the Dispute Resolution Policy and the governing law, which affected the conclusion of the judgment. The ground of appeal

3. Conclusion

Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Si-hwan (Presiding Justice)