The requirements for recognizing the existence of “justifiable title” under Article 12 of the Internet Address Resources Act to the claimant for the cancellation or transfer of the registration of a domain name, and whether the subject mark necessarily requires a wide recognition in the Republic of Korea to recognize a legitimate title to the domain name (negative)

In order to establish a “justifiable title” against a claimant for the cancellation or transfer of the registration of a domain name, there must be circumstances that establish a close relation between the domain name and the domain name on the grounds that another person already registered or used for a considerable period of time prior to the registration of the domain name with the same or similar name, trade name, trademark, service mark and other marks (hereinafter “subject mark”) as the same or similar name, trade name, trademark, service mark and other marks (hereinafter “subject mark”), and that there is a need to protect the domain name as it is deemed reasonable in light of the concept of justice and that the cancellation or transfer without payment of the domain name is directly related and directly related to the domain name and that there is sufficient need to protect the domain name from the point of view of the nature of the domain name used in the Internet space and the legislative purport of Article 12 of the Internet Address Resources Act (hereinafter “Internet Address Resources Act”); Article 4 of the Internet Address Resources Act provides that only the Internet address resources, such as the domain name of the Republic of Korea, are the same or widely recognized act of unfair competition with the domain name of the Republic of Korea.

Articles 4 and 12 of the Internet Address Resources Act; Article 4 of the former Internet Address Resources Act (Amended by Act No. 9782, Jun. 9, 2009); Article 2 subparag. 1 (h) of the Unfair Competition Prevention and Trade Secret Protection Act

Plaintiff (Law Firm Nitter International, Attorneys Yu-tae et al., Counsel for the plaintiff-appellant)

2. The term “the term “the term “the term” means the term “the term “the term” means the term “the term “the term” in this case.

Daegu High Court Decision 2010Na6759 Decided June 10, 2011

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. Article 12 of the Internet Address Resources Act (hereinafter “Internet Address Resources Act”) provides that if a person interferes with the registration of a domain name of a person who has a legitimate title, or registers, holds, or uses a domain name for unlawful purposes, such as unjust enrichment, a person who has a legitimate title may file a claim with the court for cancellation or transfer of the registration of the domain name. The purport of the above provision is to ensure the registration of the domain name of a legitimate title holder and prevent confusion among Internet users by regulating the act of cyber-quotaing, which points the domain name for unlawful purposes by abusing the impossibility of overlapping registration, even though the domain name can be freely registered on a first-come-served basis.

In order to establish a “justifiable title” against a claimant for the cancellation or transfer of a domain name, there is a close relation between the domain name and the same or similar name, trade name, trademark, service mark and other marks (hereinafter “the subject mark”) that are either registered or used for a considerable period of time in the Republic of Korea or abroad prior to the registration of the domain name. On the other hand, it is deemed that the cancellation or transfer of the domain name without payment of the price is reasonable in light of the concept of justice and that there is sufficient reason to protect the domain name as well as the legislative purport of Article 12 of the Internet Address Resources Act and the legislative purport of Article 4 of the Internet Address Resources Act as seen above. Article 4 of the Internet Address Resources Act provides only Internet address resources, such as the domain name that are identical or similar to the domain name, but also widely recognized as identical or similar to the domain name in the Republic of Korea as an act of unfair competition under Article 97 of the Act or the Unfair Competition Prevention and Trade Secret Protection Act as being widely recognized as the subject of registration or transfer of the domain name.

On the other hand, whether there exists "illegal purposes" under Article 12 of the Internet Address Resources Act against this person who registered, possessed, or used a domain name shall be determined by comprehensively taking into account the degree of awareness or creativity of the person who has a legitimate title, the same or similar nature of the domain name and the mark, whether the person who registered, possessed, or used the domain name knew of the subject mark, whether there was any history of obtaining economic benefits by selling or lending the domain name, whether there was opening the web site by the domain name, whether there was actual operation of the web site by the domain name, whether there was the same or similar economic relation between the goods or service business, etc. on the web site and the goods or service business, etc. on which the subject mark is used, whether the Internet users are induced to the web site due to the credit in the subject mark and customer attraction, and other circumstances surrounding the registration, possession, or use of the domain name (see Supreme Court Decision 2011Da6836, Apr. 26, 2013).

2. The lower court dismissed the Plaintiff’s appeal against the first instance judgment dismissing the Plaintiff’s claim. In the first instance court, the Plaintiff asserted that “NCA” under Article 12 of the Internet Address Resources Act should be construed as “a person who has a legitimate title in the Republic of Korea” and “a person who holds a right to a mark widely known in the Republic of Korea.” However, the first instance court rejected it for the reasons indicated in its holding. In full view of the following circumstances, the lower court determined that the Plaintiff’s right to claim the registration or non-existence of the domain name in the instant case (hereinafter “NCA”) was rejected by referring to the Plaintiff’s prior knowledge that “NCA” was not registered as the domain name, and the Plaintiff’s right to claim the registration or non-existence of the domain name in the instant case (hereinafter “No. 2 of the instant case”).

① Since 1952, NCA established around 1948 began to use the trademark “NCA”. The NCA mark was registered with the U.S. Intellectual Property Office on February 11, 1997, and with the European Trademark Office on October 15, 2002. ② The term “NCA” established around 1974 under the name of the Defendant company as of 1992, which was the name of the Defendant’s company, changed its trade name into the “VOUP CUU” website, including the Defendant’s 3rdropsys, and was linked to the Defendant’s website, which was a mother company of the Defendant and NCA, and the Plaintiff succeeded to the Plaintiff’s trademark right under the name of the Defendant’s “NCAUUUUUUUUU”, including the Plaintiff’s trademark right. The Plaintiff transferred the instant domain name to 200.

3. Examining the above legal principles and records in light of the above legal principles, the above judgment of the court below is just and acceptable, and contrary to the allegations in the grounds of appeal, there were no errors in the misapprehension of legal principles as to "person with legitimate title" or "unlawful purpose" as provided in Article 12 of the Internet Address Resources Act.

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Kim Chang-suk (Presiding Justice)