UPDATE ON TWNIC DOMAIN NAME DISPUTE RESOLUTIONS

01/01/2002

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The first Internet domain name dispute resolu-tion decision by a TWNIC expert panel was de-livered on 6 August 2001; it upheld a complaint by Mars Incorporated, the owner of the M&M's trademark. Since then, panels have handed down decisions in a number of other cases, but in each the panel has decided against the complainant. The domain names that complainants were un-able to recover registration of included "boss.com.tw," "decathlon.com.tw" and "ce-sar.com.tw." The common feature of the three failed complaints is that the complainants—the owners of the well known trademarks "Boss" (audio equipment), "Decathlon" (sports equip-ment) and "Cesar" (dog food)—did their utmost to show that their brand names are well known, and that they had a legitimate interest in recov-ering the domain names, but were all unable to persuade the expert panels to find in their favor. TWNIC panels have now rejected complaints in 75% of cases. This is a far cry from the 81% success rate for complainants under the WIPO domain name dispute resolution mechanism.

Under the TWNIC's Domain Name Dispute Resolution Policy, a complainant may contest the registration of a domain name by another registrant on any of the following grounds:

The domain name is identical or confusingly similar to a trademark, mark, personal name, business name, or other emblem of the com-plainant;

The registrant has no rights or legitimate in-terests in respect of the domain name; and

The registrant has registered or used the do-main name in bad faith.

To judge from the common tenor of the decisions in the above three failed complaints, TWNIC panels applied a rigorous standard of proof to the requirement of "bad faith" on the part of regis-trants—probably more rigorous than that gener-ally applied by the courts to litigation. These three successive decisions appear to have over-turned the impression, created by the first, suc-cessful complaint, of a willingness to assist complainants in recovering domain names. If this trend is not reversed, it seems likely to im-pact the effectiveness of the TWNIC's dispute resolution mechanism, and to drive domain name disputes into the courts.