Supreme Court decision represents significant defeat for cybersquatters

South Korea

The Supreme Court of Korea has confirmed that the lack of fame of a trademark in Korea could no longer be used as an excuse by cybersquatters in cases involving top-level domain names, including ‘.com’ (Case No 2011Da577661, September 12 2013). Korean cybersquatters had often argued, in civil actions filed under the Korean Internet Address Resource Act (IARA), that the foreign owner of a trademark that was famous abroad did not have legitimate rights to demand the transfer or de-registration of a domain name if the mark was not also famous in Korea.

In the case before the Supreme Court, the Korean registrant had registered the domain name ‘www.nca.com’ and was seeking a confirmatory judgment that the US entity that owned the trademark NCA, which is famous in the United States, did not have legitimate rights in the domain name. NCA is the abbreviation of ‘National Cheerleaders Association’ and is famous in the United States in connection with the organising of cheerleading camps, as well as the sale of cheerleader-related clothing. The US entity did not own any trademark registrations in Korea and could not prove the fame of its mark in Korea.

The court found that the bad-faith of the registrant in this case was blatant - the registrant had purchased various keywords referring to cheerleading, and the domain name ‘www.nca.com’ resolved to a website offering links to the website of a competitor of the US entity, as well as to an adult-content website. In addition, the domain name had been registered after the US entity had obtained a registration for the NCA mark in the United States.

The IARA provides that a party who has legitimate rights to a domain name may seek de-registration or transfer thereof if the registrant has registered, maintained or used the domain name for bad-faith purposes. Until now, even if a foreign entity owned a famous trademark, it was difficult to convince the Korean courts that the trademark owner had legitimate interests in a domain name consisting of, or including, such trademark under the IARA if the trademark was not also well known or registered in Korea.  

With this decision, the Supreme Court confirmed that, although a lack of trademark registration or a lack of fame in Korea are important elements that must be taken into consideration, these factors alone are not sufficient to rule that a party does not have any legitimate interests in a domain name in Korea. The fame of the mark abroad may be sufficient, especially if the registrant’s bad faith can clearly be established, as was the case here.

Alexandra Bélec and Young Joo Song, Kim & Chang, Seoul

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