Supreme Court Decision 2011Da64836 Decided April 26, 2013 about Confirmation, etc., of Domain Address Possession

Main Issues and Holdings

[1] The purpose of prohibiting an act of registering domain names for unlawful purposes, etc., under Article 12 of the Internet Address Resources Act, and the standard for determining “unlawful purposes”

[2] In a case where Gap registered and possessed a domain name (k2.co.kr) which includes Eul corporation’s trademark “,” the case affirming the judgment below which held that Gap’s registration and possession of the aforementioned domain name were for “unlawful purposes” as provided by Article 12 of the Internet Address Resources Act

Summary of Decision

[1] Articles 12(1) and 12(2) of the Internet Address Resources Act provide that anyone who obstructs the registration of any domain name, etc., of persons who have a legitimate source of authority, or registers, possesses or uses a domain name for unlawful purposes, such as reaping illegal profits from persons who have a legitimate source of authority (hereinafter “persons with legitimate authority”), the persons with legitimate authority may request the cancellation of such domain name or transfer of registration of such domain name, etc., to a court. The purposes of the above provision are to guarantee the registration and use of domain names owned by persons with legitimate authority and to avert Internet users’ confusion, etc. regarding domain names by preventing acts of so-called “cyber-squatting.” In principle, domain names can be registered freely in order of application; however, cybersquatting refers to an act of occupying domain names for unlawful purposes and abusing the fact that the same domain name cannot be registered repeatedly. Meanwhile, the above “unlawful purposes” should be determined by considering the following: the degree of recognition or creativity of the name, trade name, trademark, service mark and any other marks (hereinafter “subject mark”) of the person with legitimate authority; degree of identity and/or similarities between the domain name and the subject mark; whether the registrant/owner or user of the domain name was aware of the subject mark, and whether s/he had a history of attempting to gain economic profit by selling or loaning the domain name; whether a website under the domain name was made, andwhether the website was actually up and running; the identity and/or similarities of the product or service etc. of the website and the product or service etc. of the subject mark, or whether they were economically related; whether Internet users are lured to the website by the trust and customer appeal embodied by the subject mark; and circumstances surrounding the registration/possession or use of the domain name. However, it should be assumed that those with legitimate authority or profit concerning the registration/possession or use of the domain name do not have such unlawful purposes, unless in unusual circumstances.

[2] In a case where Gap registered and possessed a domain name (k2.co.kr) which includes Eul corporation trademark “,” the judgment below held that Gap had “unlawful purposes” provided by Article 12 of the Internet Address Resources Act upon considering that Eul corporation is using trademarks identical to “” for climbing equipments, Gap was aware that Eul used such trademarks when registering the domain name, Eul corporation’s “” has acquired wide recognition as a climbing equipment brand, and the website which opened under the above domain name was not properly managed, and thus Gap gains no particular profit by owning the above domain name, while there exist unlawful purposes, such as obstructing Eul’s (who has legitimate authority) domain name registration. The court affirmed the judgment below.

Reference Provisions

[1] Articles 12(1) and 12(2) of the Internet Address Resources Act / [2] Articles 12(1) and 12(2) of the Internet Address Resources Act

Article 12 of the Internet Address Resources Act (Prohibiting Registration of Domain Names for Unlawful Purposes)

(1) No one shall obstruct the registration of any domain name, etc. of persons who have a legitimate source of authority, or register, possess or use domain name for unlawful purposes, such as reaping illegal profits from persons who have a legitimate source of authority.

(2) When anyone registers, possesses or uses a domain name, etc., in violation of paragraph (1), persons who have a legitimate source of authority may request the cancellation of such domain name or transfer of registration of such domain name, etc., to a court. (Amended by Act No. 9782, June 9, 2009)

Plaintiff-Appellant Plaintiff (Hangang Law Corporation, Attorney Kim Hak-geum, Counsel for plaintiff-appellant)

Defendant-AppelleeK2 Korea Co. (Lee & Ko, Attorneys Seo Mu-song, et al., Counsel for defendant-appellee)

Judgment of the court below Seoul High Court Decision 2010Na106353 decided June 30, 2011

Disposition The appeal is dismissed. The costs of appeal are assessed against Plaintiff.

Reasoning The grounds of appeal are examined.

1. Articles 12(1) and 12(2) of the Internet Address Resources Act provides that anyone who obstructs the registration of any domain name, etc. of persons who have a legitimate source of authority, or registers, possesses or uses a domain name for unlawful purposes, such as reaping illegal profits from persons who have a legitimate source of authority (hereinafter “persons with legitimate authority”), the persons with legitimate authority may request the cancellation of such domain name or transfer of registration of such domain name, etc. to a court. The purposes of the above provision are to guarantee registration and use of domain names owned by persons with legitimate authority and to avert Internet users’ confusion, etc. regarding domain names by preventing acts of so-called “cyber-squatting.” In principle, domain names can be registered freely in order of application; however, cybersquatting refers to an act of occupying domain names for unlawful purposes and abusing the fact that the same domain name cannot be registered repeatedly. Meanwhile, the above “unlawful purposes” should be determined by considering the following: the degree of recognition or creativity of the name, trade name, trademark, service mark and any other marks (hereinafter “subject mark”) of the person with legitimate authority; degree of identity and/or similarities between the domain name and the subject mark; whether the registrant/owner or user of the domain name was aware of the subject mark, and whether s/he had a history of attempting to gain economic profit by selling or loaning the domain name; whether a website under the domain name was made, and whether the website was actually up and running; the identity and/or similarities of the product or service etc. of the website and the product or service etc. of the subject mark, or whether they were economically related; whether Internet users are lured to the website by the trust and customer appeal embodied by the subject mark; and the circumstances surrounding the registration/possession or use of the domain name. However, it should be assumed that those with legitimate authority or profit concerning the registration/possession or use of the domain name do not have such unlawful purposes, unless in unusual circumstances.

2. Based upon consideration of the following circumstances, the court below determined that Plaintiff gains no particular profit by currently owning the domain name “k2.co.kr” (hereinafter “domain name of this case”) since registering the name on Jan. 28, 2000, and there exist unlawful purposes, such as obstructing the domain name registration of Defendant (i.e., a person with legitimate authority).

① Since 1972, Plaintiff has used trademarks identical to “” on climbing equipment, and was presumably aware that Defendant used such trademarks when registering the domain name of this case; ② Defendant trademark “” has acquired wide recognition as a climbing equipment brand ③ The website which opened under the domain name of this case had not been properly run, and it was closed from around 2008 up to Dec. 14, 2009, when Defendant applied to the Internet Address Dispute Resolution Committee to resolve the dispute over the domain name of this case.

3. Upon examining the records in light of the aforementioned legal principles, the above determination of the court below is acceptable. Contrary to the allegation in the grounds of appeal, the court below did not err by misapprehending the legal principles on “unlawful purposes” as provided by Article 12(1) of the Internet Address Resources Act, or by acknowledging facts against the principle of reason and experience.

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

Justices   

Ko Young-han (Presiding Justice)

Yang Chang-soo (Justice in charge)

Park Byoung-dae

Kim Chang-suk