NBA wins in 'nba.com.tw' dispute

Taiwan

In NBA Property Inc v Chen, Chien-Chi (Case 91 Kuo-Mao-Shan-Chi 4), the High Court of Taiwan has ordered the cancellation of the registration for 'nba.com.tw'. The court affirmed a district court cybersquatting decision, holding that the plaintiff's NBA mark is well known and the use of the disputed domain name may have confused consumers.

Chuan Wen Computer Typesetting Co Ltd registered 'nba.com.tw' and offered it for sale on its web page. NBA Property owns the famous NBA trademark which is an acronym for National Basketball Association. It requested that Chuan Wen cancel its registration. Instead of cancelling the registration, Chuan Wen assigned the domain name to Chen. NBA Property made the same request of Chen but it was refused. It then successfully brought an action for cancellation before the Taipei District Court.

On appeal at the High Court of Taiwan, Chen contended that there was no likelihood of confusion on the part of consumers because a domain name is merely a website address. This, argued Chen, is very different from a trademark's role as an indicator of the origin of products or services.

The court rejected Chen's arguments and ordered the cancellation of the registration. It affirmed the principle that a domain name similar or identical to a mark functions in the same way as a trademark. The court, therefore, reasoned that domain names may well serve as symbols representing the source of goods and services. Since 'nba.com.tw' was identical to NBA Property's famous mark, the court concluded that it was likely that consumers would incorrectly associate the domain name with NBA Property.

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei

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