[1] The case holding that the act of registering and using a domain name "herherts.com" similar to the widely known registered trademark "HERTZ constitutes an unfair competition act under Article 2 subparagraph 1 (h) of the Unfair Competition Prevention and Trade Secret Protection Act

[2] Whether the right to request registration of transfer of domain name which is the object of unfair competition is recognized as an effect of prohibiting unfair competition under the Unfair Competition Prevention and Trade Secret Protection Act (negative)

[1] The case holding that the act of registering and using the domain name constitutes an act of unfair competition under Article 2 subparagraph 1 (h) of the Unfair Competition Prevention and Trade Secret Protection Act on the ground that the domain name "herherherherherherherherherherherherherherherherherherherherherherherherherherherherherherherherherherher own is identical to that of the well-known registered trademark of the world largest vehicle leasing company, which has acquired widely known recognition in the Republic of Korea due to a car leasing business, and its appearance is almost the same as that of the well-known registrant of the Alphaba

[2] The registration of transfer of a domain name, which is the object of an unfair competition act, is strong measures to cancel the registration. The Unfair Competition Prevention and Trade Secret Protection Act only prescribes "registration cancellation" under Article 4 (2) 3, and does not explicitly stipulate "transfer registration". It is difficult to conclude that the registration transfer registration is included in "other necessary measures to prohibit or prevent unfair competition" under Article 4 (2) 4 of the same Act. The recognition of the registration transfer is sufficient to protect the well-known and well-known trademark mark only with the prohibition of use or cancellation of the registration of the domain name violates the principle of proportionality and supplement. If multiple right holders request registration of a single domain name, it is difficult to determine to grant priority to anyone, it cannot be seen as the effect of the prohibition of unfair competition under the Unfair Competition Prevention and Trade Secret Protection Act.

[1] Article 2 subparagraph 1 (h) of the Unfair Competition Prevention and Trade Secret Protection Act / [2] Article 4 (1), (2) 3 and 4 of the Unfair Competition Prevention and Trade Secret Protection Act

Plaintiff

Hez system (Law Firm Geosung, Attorneys Jeon Young-young et al., Counsel for the plaintiff-appellant)

July 3, 2008

1. It is confirmed that the Defendant (Counterclaim Plaintiff) did not have the right to claim the registration of transfer of the domain name “herherherherherher.com” registered with the Korea Information Certification Corporation.

2. On May 2, 2001, the Plaintiff (Counterclaim Defendant) performed the procedure for cancellation of the domain name “herherherge.com” registered with the Korea Information Certification Co., Ltd. on May 2, 2001.

3. The plaintiff (Counterclaim defendant)'s remaining claims are dismissed.

4. The costs of lawsuit are assessed against the Plaintiff (Counterclaim Defendant) and the remainder are assessed against the Defendant (Counterclaim Plaintiff), respectively, by adding the principal lawsuit and the counterclaim.

In this lawsuit, it is confirmed that the defendant (Counterclaim Plaintiff; hereinafter "the plaintiff") with respect to domain name "herherts.com" registered with the Korea Information Certification Corporation (hereinafter "the plaintiff") did not have the right to claim cancellation of registration and the right to claim prohibition against use.

Counterclaim: The same shall apply to paragraph (2) of this Article.

A principal lawsuit and a counterclaim shall be deemed simultaneously.

1. Basic facts

The following facts are not disputed between the parties, or may be acknowledged by considering the whole purport of the pleadings in each entry in Gap's evidence 1 to 4, Eul's evidence 1 to 4, and Eul's evidence 1 and 4 to 7, and no other counter-proof exists.

A. Status of the parties

(1) On May 2, 2001, the Plaintiff registered the domain name “herherge.com” (hereinafter “the domain name of this case”) with the Internet domain name “herge.com,” which is certified by the International Internet Address Management Organization (ICNN, Inc. for Quality).

(2) The Defendant established around September 1918 and registered approximately 3,100 business places in the United States, approximately 8,100 overseas, and approximately 8,100 business places in the Republic of Korea, and run the leasing business of automobiles, trucks, etc. since it registered the mark "HERTZ" on January 26, 196 in Korea as a leasing business of automobiles and trucks.

B. Decision to transfer the domain name of the domain name dispute mediation center and plaintiff's objection

(1) On August 1, 2007, the defendant applied for the commencement of compulsory administrative procedures to the Arbitration Center of the World Intellectual Property Organization (UDRP) under the Uniform Domain (Uni Form Dr. Name Dr. hereinafter referred to as "UDRP") and the rules thereof (hereinafter referred to as "UDRP rules"), against the plaintiff who is the registrant of the domain name of this case, pursuant to UDRP, pursuant to UDRP, the defendant decided to transfer the domain name of this case to the defendant on November 9, 2007. The arbitration center decided to transfer the domain name of this case to the defendant.

(2) On November 23, 2007, the date when the decision was notified pursuant to Article 4(k) of UDRP, the Plaintiff filed the instant lawsuit with the court on November 23, 2007, and accordingly, the execution of the said decision was suspended.

2. The parties' assertion

A. The plaintiff's assertion

As the plaintiff is the main lawsuit, there is a difference between the defendant's "HETZ" and the defendant's English wire, and the domain name of this case is different from each other in the common terms used as the abbreviation of the name "HETZ" in England. The plaintiff acquired the domain name of this case by legitimate means, and did not register or use it for unlawful purposes. Thus, pursuant to Article 4 of UDRP, the defendant did not have the right to seek the prohibition of use, cancellation and transfer of the domain name of this case by filing an application for cancellation or transfer of the domain name of this case to the plaintiff pursuant to the plaintiff pursuant to Article 4 of UDRP, and the right to the domain name of this case exists in the plaintiff.

B. Defendant’s assertion

As to this, the defendant asserts that the decision of the World Intellectual Property Organization Mediation Center to transfer the domain name of this case to the defendant and that the plaintiff uses the domain name of this case similar to the defendant's "HERZ" and its appearance constitutes an unfair competition act under the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter "Unfair Competition Prevention Act"), and filed a claim for the cancellation of registration of the domain name of this case.

3. Judgment on the principal lawsuit and counterclaim

A. Criteria for determining the substance of this case

UDRP is incorporated into the terms and conditions of registration agreed between the registrar of the domain name and the registrant of the domain name, and where a dispute arises between the registrant of the domain name and the holder of a right to trademark or service mark (hereinafter "third party"), the administrative procedures of the registrar to improve the appropriateness of the registration administration by promptly making a decision on the maintenance, cancellation, transfer, etc. of the domain name, and UDRP does not have binding force on regulating the substantive legal relationship between the registrant of the domain name and the third party on the registration, use, etc. of the domain name. Thus, the third party does not have any substantive right to directly file a claim against the registrant of the domain name pursuant to the requirements set by UDRP. Accordingly, the court which examines and determines a lawsuit on the domain name shall not be based on UDRP, but shall examine and determine the case (see Supreme Court Decision 2007Da24757, Feb. 21, 2008) by the law applicable to the case in question (see Supreme Court Decision 2007Da4757, Feb. 27, 2007).

B. Whether the act constitutes an unfair competitive act

(1) Article 2 subparagraph 1 (h) of the Unfair Competition Prevention Act

Article 2 subparag. 1 (h) of the Unfair Competition Prevention Act provides that an act of registering, possessing, transferring, or using a domain name identical or similar to another person's name, trade name, trademark, or other mark widely known in the Republic of Korea is an unfair competition act for any of the following purposes: (1) a person without a legitimate source of authority who sells or lends a mark, such as a trademark, to a third party; (2) a person with a legitimate source of authority to obstruct the registration and use of a domain name by a legitimate source of authority; and (3) other commercial profits; and (1) a person who registers, possesses, transfers, or uses a domain name identical or similar to another person's name, trade name, trademark, or other mark, which is widely known in the Republic of Korea. Such unfair competition act is one of the following requirements.

(2) Whether the Defendant’s sign “HERTZ” is well-known

A mark indicating goods or business of another person widely known in the Republic of Korea refers to a case where the traders or consumers are widely aware of certain goods or business through it within a certain scope from other goods or business in the Republic of Korea. Whether the mark is widely known in the Republic of Korea is based on the period of use, method, pattern, quantity of use, scope of business, etc., and whether it is objectively widely known under the social norms (see Supreme Court Decision 2005Do6834, Nov. 25, 2005).

In light of the above facts, as seen earlier, the Defendant’s maximum vehicle leasing company around the world operating a car leasing business and related business using the name in English of “HERTZ” has approximately 8,100 business offices around the world including the Republic of Korea, and the trademark including the mark “HERTZ” has been applied for and registered in the Republic of Korea as well as in countries around the world, as well as in the Republic of Korea. In light of the whole purport of the arguments in the evidence Nos. 6 and 7, the Defendant extended the business sector since the commencement of the car leasing business in the Sica of the United States of America on September 1918. The Defendant searched the Internet portal site with the Defendant’s web documents, etc. using the Internet portal site to search for several relevant articles and categories, and provided various information such as the Defendant’s history, business scope, etc. at the time of the conclusion of the trademark recognition as above, the Defendant’s trademark recognition of “HTZ” can be widely known to or widely known to consumers in the Republic of Korea as the source of the Plaintiff’s goods and its origin.

(3) Whether the plaintiff's domain name of this case and the defendant's mark (HERT) are similar to the domain name of this case

Generally, whether a trademark is identical or similar should be determined by whether there is fear of mistake or confusion as to the source of a trademark by observing two trademarks used for the same kind of product in the overall, objective, and apart from the appearance, name, and concept of appearance, etc. and on the basis of a direct perception that ordinary consumers or traders feel with respect to the trademark (see Supreme Court Decision 2003Hu1871, Oct. 15, 2004). In the domain name of this case, the term “.com” in the domain name of this case indicates that the term “.com” is a general maximum domain name, referring to an enterprise, etc., and thus it is difficult to recognize its distinctiveness. Therefore, the main part of the Plaintiff’s main part, which is distinctive from the domain name of this case, is

The main part of the domain name of this case, "herherhere" and "HETZ", the defendant's registered trademark of this case, are identical to "Huz", and only one of the alphabet iron, and their appearance is almost the same as that of the defendant's English trade name and registered trademark. Thus, the domain name of this case can be confused with the domain name of this case as the same name as the defendant's English trade name and registered trademark without recognizing the difference. Thus, the domain name of this case is identical to the defendant's business mark in whole.

(4) Whether the Plaintiff registered and possessed the domain name of this case for an unlawful purpose

In light of the overall purport of the above evidence, Gap evidence Nos. 7, Eul evidence Nos. 2, 3, and 8 and each of the above evidences, (1) the plaintiff did not have any business related to the lease of automobiles or any similar business before acquiring the domain name of this case. ② The web site opened as the domain name of this case after the plaintiff registered the domain name of this case consists of automobile rental companies and link services as major mail, and as such, the plaintiff's official web site "Her.com", which is the defendant's official web site, was linked to the web site of this case. Further, according to the above facts, the plaintiff's competitive company was holding a link to the web site of this case, such as the defendant's commercial name Nos. 2, 3, and 8 and the whole evidence evidence, and (3) the plaintiff introduced the defendant's duty to open the domain name of this case as well as the fact that the plaintiff did not use the domain name of this case for the purpose of its initial disclosure or change of the domain name of this case to the web site of this case.

(5) Sub-committee

Therefore, the plaintiff's act of registering and using the domain name of this case constitutes an unfair competition act under Article 2 subparagraph 1 (h) of the Unfair Competition Prevention Act.

(c) Effects of unfair competitive acts;

(1) Therefore, the defendant may claim against the plaintiff for the prohibition of the use of the domain name of this case pursuant to Article 4 (1) of the Unfair Competition Prevention Act, since the plaintiff's business profit is or may be infringed upon due to the above unfair competition act, and the plaintiff may claim for the cancellation of the registration of the domain name of this case against the plaintiff pursuant to Article 4 (2) 3 of the same Act.

(2) Furthermore, as an effect of the prohibition of unfair competition under the Unfair Competition Prevention Act, whether the defendant has the right to claim the transfer registration of the domain name of this case registered in the plaintiff's name as well as the cancellation of the registration of the domain name of this case. (1) The registration of the domain name of this case is strong measures to cancel the registration. (2) The Unfair Competition Prevention Act only prescribes "registration" in Article 4 (2) 3, but does not explicitly stipulate "transfer registration", and it is difficult to conclude that the transfer registration is included in "other measures necessary for the prohibition or prevention of unfair competition" in subparagraph 4 of the same Article. (2) It is sufficient to protect the well-known and well-known trademarks only with the prohibition of use or cancellation of the registration of the domain name of this case. (3) The registration of the domain name of this case can not be viewed as the effect of the prohibition of unfair competition under the Unfair Competition Prevention Act.

(3) Sub-decisions

Ultimately, although the defendant has the right to prohibit the use of the domain name of this case against the plaintiff and the right to cancel the registration of the domain name of this case, the defendant does not have the right to claim the transfer of the domain name of this case. Since the defendant seeks the cancellation of the registration of the domain name of this case as a counterclaim, the plaintiff is obligated to implement the procedure

4. Conclusion

Thus, the plaintiff's claim of the main lawsuit is justified within the scope of confirming the absence of the defendant's right to transfer the domain name of this case. The plaintiff's remaining main claim is dismissed as it is without merit, and the defendant's counterclaim is accepted as it is decided as per Disposition with the assent of all participating Justices.

Judges Park Jong-jin (Presiding Judge)