Startup companies often live on a shoe string budget in the
first few months, if you are lucky, and, more likely, in the first few years. Because
of the budget constrain, these companies tend to ignore IP strategy in
foreign countries, especially in Asian countries. Language hurdles and culture barrier often
compound the problem. When the startup
company finally “made it” with the product gaining recognitions on the market
and started to explore big potentials in the Asian market, the company often
finds itself looking at the similar domain names already registered by someone
else in that country. This post provides
some basic information on domain dispute in China and Korea.
Korea
To initiate a domain name dispute resolution process in
Korea, you must show one of the following:
1)
The domain name uses a trademark or service mark
that is well-known in Korea, or
2)
The domain name uses a trademark or service mark
that is registered mark in Korea.
For a small company, it is often hard to show that the
trademark is well known in Korea. Therefore,
you might have to rely on factor 2) by registering your trademark in Korea
first. Korean trademark registration
usually takes 10-12 months to obtain a registration from the time of filing the
trademark application. In order to
initiate a domain name dispute under the above factor 2), you will need to wait
until you’ve obtained the trademark registration in Korea.
Of course, you can always find out to whom the domain name
is registered to by searching WHOIS.
Contacting the owner to start a good faith negotiation on transferring the
domain name to you is always another way to go.
China
To cancel a domain name registration under the Chinese
domain name dispute resolution policy, your must satisfy all four following
factors:
1)
The domain registration is not more than 2 years
old;
2)
The domain name is identical or confusingly
similar to your company’s name or trademark in which you have civil or
commercial rights or interest;
3)
The domain name registrant has no legitimate
interest; and
4)
The domain name was registered or is being used
in bad faith.
On factor 2), you don’t have to obtain the trademark
registration in China. You only need to
show that you have prior right or interest in the name or trademark.
On factor 3), in order to show that a domain registrant has
a legitimate interest, the registrant must show one of the following:
a)
it uses the domain name in connection with a
bona fide offering of goods;
b)
it has been commonly known by the domain name; or
c)
it is making legitimate noncommercial or fair
use with no intent for commercial gain.
Evidence of bad faith that can be used to counter the above legitimate
interest arguments could be any of the following:
d)
the domain registrant offers to sell the domain
name to you as the owner of the trademark or company name;
e)
the registrant registered the domain mane for
the purpose of disrupting your normal business; or
f)
the registrant created confusion with your
company name or trademark that has the effect of misleading the public.
By following the above process, you could potentially get
your domain name back. Chinese court
system tends to rely on the written evidence.
So, if you decide to start a conversation with the person who has
registered your domain name in China, you might want to keep a good written
record on what’s going on.
Thanks for reading.
Connie
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