Domain names are indispensable in e-commerce. Every computer connected to the internet is assigned a unique IP address consisting of a string of numbers. A domain name includes the characters that translate the numbers for practical use.
Our firm's domain is "http://www.ondatechno.com". In this string of characters, "http://www." refers to the computer protocol, and "ondatechno.com" is usually called the domain name. The ".com" part indicates the organization types, and the distinctive portion of the domain name is "ondatechno". A company's name, product name, or registered trademark is often used as domain name for the company's web site.
Domain names can be divided into generic top level domains (gTLD) such as "-.com" and country code top level domains (ccTLD). Under a contract with the Internet Corporation for Assigned Names and Numbers (ICANN), a US non-profit organization, a US company called VerySign Registry Services administers registration of gTLD. and each national Network Information Center (JPNIC for Japan) administers registration of ccTLD.
Domain name registrations are assigned on a first come, first serve basis. One can select any letters and the registry assigns registration without examination. Since domain names merely translate IP address to characters, it is possible to register any domain name as long as no identical domain name exists. As a result, domain names that are identical or similar to another company name or registered trademark can be registered in bad faith. Further, with the forthcoming introduction of domain name registration in Japanese characters and the relaxation of requirements for registration including the allowance of one organization to have plural domain name registrations, more confusion is expected in the near future in Japan.
As to unfair registration of domain names, WIPO's Arbitration and Mediation Center, NAF, eRes, and CRP are the licensed organizations by ICANN to resolve domain name disputes. As to Japan, IPAC is the licensed organization to resolve domain name disputes by JPNIC.
WIPO's decisions relating to Japanese companies include "hitachi2000.net" (decision to transfer) , "jal.com" (no grounds), and (Sankyo in Japanese) .com" (the first decision to transfer of domain name in Japanese). Details of these decisions are available at the WIPO web site. The following discussion relates to decisions related to domains in Japan.
Decisions available through the Arbitration Center for Industrial Property (ACIP) are basically resolutions based on contracts between the registry (JPNIC) and the registrant.
Once a request for resolution of domain name dispute is filed with the ACIP, normally, one panelist is selected and a decision is made considering the following three elements.
If the registrant files an appeal within 10 business days from the receipt of the decision from the ACIP, JPNIC will not implement the Panel's decision. Otherwise, the JPNIC will implement the Panel's decision (cancellation or transfer of the domain name).
After the decision is made, the complainant or the registrant may take the following steps:
Table 4 shows a list of domain name dispute cases before ACIP and the status of each as of April 10, 2001.
|Date of submission of the request||Current status||JPNIC's dealings|
|JP2000-0002||GOO.CO.JP||2000/11/24||Transfer||Being Appealed. The decision not implemented.|
|JP2001-0001||ITOYOKADO.CO.JP||2001/01/15||Transfer||Implemented the decision|
|JP2001-0002||SONYBANK.CO.JP||2001/01/25||Transfer||Being Appealed. The decision not implemented.|
The following discussion relates to a recent notable case in Japan, i.e., "goo.jp (decision of transfer, appealed).
The complainant is KABUSHIKI KAISHA NTT-X (NTT-X) is a Japanese corporation established in 1999 as a related company of NIPPON TELEGRAPH AND TELEPHONE (NTT). The complainant is engaged in the management of an internet searching service called "goo site" which was assigned from KABUSHIKI KAISHA NTT AD, which is also a related company of NTT. The complainant registered the domain name "goo.ne.jp" in February of 1997. The complainant owned a trademark registration for "GOO and Japanese characters" in Classes 35, 38 and 42.
On the other hand, the registrant, YUGEN KAISHA POPCORN, is a Japanese corporation established in 1994 and owns a domain name registration for "goo.co.jp" at JPNIC.
The registration of the domain name by the registrant was prior to the complainant's registration of its domain name. The registrant has been using its domain name exclusively for the purpose of directing visitors to a web site managed by YUGEN KAISHA REAL that offers pornographic contents for a fee. The registrant's use started immediately after about September of 1999, when the complainant established its "goo site".
The complainant requested a decision to transfer the registered domain name to the complainant on the ground that the registrant has no rights or legitimate interests to the registered domain name.
The panel decided as follows in accordance with the above mentioned three elements (a) (b) and (c).
The panel decided based on the evidence produced by the complainant that the complainant has legitimate interests in continuously using the indications of "goo" and "goo.ne.jp" used in the goo site. This is because these indications had already attracted a significant number of customers at the time the registrant started to use the indications for the purpose of directing visitors to the other site.
Then, the panel decided that the registrant's domain name "goo.co.jp" and the complainant's domain name "goo.ne.jp" are identical in their most distinctive part "goo" and that they are similar as a whole. Also, the panel determined that the main part of the registrant's domain name "goo" and the complainant's trademark are identical in sound and similar in appearance, and therefore, they are similar as a whole. Considering the fact that the complainant's goo site has become well known, the panel decided that there is a likelihood of confusion between the registrant's domain name and the complainant's domain name and trademark.
Next, the panel considered how the registrant's domain name had been used. It found that there is no information original to the registrant in the registrant's domain name site and that, if one accesses the site, the visitor is automatically transferred to the site showing pornographic images. The registrant's site was designed to show pornographic images one after another by pop-up windows. This site could not be closed until all the windows are closed. The panel decided that the registrant's site was used for the purpose of redirecting users to the other site only after the complainant's site had become famous.
Therefore, the panel found that the registrant was aware that users may access the registrant's site by mistaking it with the complainant's site and that users who mistakenly accessed the registrant's site would be forced to view several pornographic images.Further, the panel found that the registrant did not care whether the complainant's reputation was damaged by this situation and that the registrant intended to gain commercial profits by attracting users to download some of the images for fees. Based on these findings, the panel decided that the use of the domain name by the registrant was "in bad faith".
Although the registrant argued that its domain name was registered before the complainant established its web site and that their trademark was registered, the panel dismissed the argument. The panel decided that even though there was no bad faith at the time of registration, the use in bad faith occurred after the registration, and such use falls under this provision.
Finally, the panel reviewed whether the registrant has no rights or legitimate interests in the registration of the domain name. First, the panel determined that the registrant has no rights or legitimate interests in the registration of the domain name. Since the registrant obtained registration of the domain name before the complainant established its web site or obtained a trademark registration, the registrant was free to register the domain name. However, the panel determined that use of the domain name in bad faith after registration destroyed the legitimate interests in maintaining the registration. The panel interpreted the intent of Element (b) as referring not only to registration per se but also to the case where there are no legitimate interests in maintaining the registration of the domain name. If it is not so interpreted, use in bad faith occurred after registration is left unchecked. This would be contrary to the basic principle of the policy of resolving disputes arising from domain name use between the registrant and a third party by judging the above mentioned three elements.
Also, the fact that the registrant is not known to the public by the name in the domain name has contributed to the decision. The trade name of the registrant is "YUGEN KAISHA POPCORN", and the site of the domain name is used exclusively for the purpose of redirecting users to the other site and has no original information in it. There evidence that support that the registrant is known as "goo" or "goo.co.jp".
Consequently, the panel decided that the registrant has no rights or legitimate interests in the registration of the domain name.
The following discussion relates to so called "JACCS case" (Toyama District Court, case No. H10-323). Currently, an appeal is pending before Nagoya High Court. This case is the first judicial decision in Japan regarding domain names. The first stage decision by TOYAMA district court is to admit plaintiff's injunction claim to prevent the defendant from using the domain name "http://www.jaccs.co.jp" and the indication of "JACCS" in their web site based on the Unfair Competition Prevention Law Art. 2-1-1 and 2-1-2.
What is at issue in this case is whether the domain name falls under the "indication of products, etc." as prescribed in the UCPL 2-1-1 and 2-1-2. The court decision found that it falls under the "indication of products and the like" because the domain name functions to identify the source of products shown in the web site along with the indication of JACCS.
If this is so, what will it happen if the domain name is used merely as an URL? It is arguable that the UCPL is inapplicable.
Also, there are discussions relating to the subject of the injunction in this case. Although the subject of the injunction was "http://www.jaccs.co.jp" according to the plaintiff's claim, some say that the subject of injunction should have been the domain name "jaccs.co.jp" only. This is because, as mentioned above, the "http" only refers to the communication protocol, and the "www" part shows that the domain name exists on the world wide web. Accordingly, it is argued that, with the subject of injunction in this case, the defendant will not be prohibited from using the domain name on a mail server or under other communication protocols.(Lawyer, KIRIHARA, Kazunori, CIPIC Journal vol. 109 "Court decisions concerning protection of domain name by the Unfair Competition Prevention Law).
In Japan, amendments incorporating the following provisions to the UCPL will be brought to ordinary diet session in this term.
The details of the progress may be available on the web site of the Economics and Industry Department.
The following is a definition proposed for the amendment:
Article 2 "Unfair competition" under this Law means the following:
(i) - (xi) (unchanged)
(xii) The act of acquiring rights or preserving the right to use a domain name that is identical or similar to the indication of another person's particular product (i.e., the name, trade name, trademark mark or other indication of goods or services of another person's) for the purpose of gaining unfair profits or causing harm to another.
(xiii) - (xv) (unchanged)
7 "Domain name" under this Law means characters, numbers, signs codes or combinations thereof that correspond to numbers, signs, codes or a combination of characters that are assigned to distinguish individual computers on the internet.