Korean cybersquatter loses to Sony and Ericsson
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre recently held in Sony and Ericsson v Byung-Keon Park that the Korean registrant of six domain names containing the trademarks SONY and ERICSSON was a cybersquatter and forced him to transfer the domains to the trademarks owners.
WIPO applies the Uniform Domain Name Dispute Resolution Policy, which requires that in order to prevail in a cybersquatting dispute the complainant must establish three elements:
- the domain name must be identical or confusingly similar to the complainant's trademark;
- the respondent must have no legitimate interest in the domain name; and
- the domain name must have been registered in bad faith.
Park had registered six domain names (including 'sonyericsson.com'), all of which combined the SONY and ERICSSON trademarks with various suffixes such as '.com' and '.net', around the time that Sony and Ericsson announced their business alliance plan.
While the complainants had no trouble establishing the first two elements in their cybersquatting suit, the registrant's bad faith was harder to prove because (i) the websites under the domain names were not active and did not include information that would be deemed to be explicitly infringing the complainants' rights, and (ii) the registrant did not offer to sell the names.
Nevertheless, the complainants ultimately proved bad faith by showing that:
- the SONY and ERICSSON marks are famous worldwide;
- the registration occurred around the time the complainants' alliance was announced;
- the registrant did not use the domain names for noncommercial purposes or other justifiable reasons; and
- by registering six similar domain names that consisted of the complainants' marks, the registrant had interfered with the complainants' business.
Young June Yang, Kim & Chang, Seoul
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