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The US company NBA Properties, Inc. brought an action in the Taipei District Court against the Network Bookstore Alliance, alleging that the latter's use of the Internet domain name "www.nba.com.tw" violated Article 20 Para-graph 1 Item 2 of the Fair Trade Law (FTL). The plaintiff petitioned the court to forbid the de-fendant to use text identical or similar to "NBA" as the distinctive portion of its domain name, and to order the defendant to cancel its registration of the domain name "www.nba.com.tw" with the Taiwan Network Information Center (TWNIC). The Taipei District Court ruled in the plaintiff's favor, for the following reasons:
NBA Properties, Inc. is the exclusive licensing and merchandising agent for the basketball teams that are the members of the US National Basketball Association. It has acquired the right to exclusive use in the ROC of several dozen service marks and trademarks. Market research data indicates that basketball is the most popular sport among young people in Taiwan, and that awareness of the NBA brand in Taiwan stands as high as 90%. Further, NBA programs are broadcast by television companies in Taiwan, and the name has ac-quired a high degree of renown and is well known to consumers in general in Taiwan. Therefore "NBA" is highly distinctive in Taiwan and is sufficient to identify a supplier of services or goods.
The scope for which NBA Properties, Inc. has acquired the right to the exclusive use of ser-vice marks includes the retail sale of books. By the defendant's own statement, it has used the disputed domain name to engage in the provision of an online service as a network bookstore alliance. It has thus engaged in the provision of similar services as those provided by the plaintiff under the name "NBA". As a result, confusion is likely to arise among consumers between the services provided by the plaintiff and those provided by the defen-dant.
Although NBA Properties, Inc. does not in fact engage in the retail sale of books in Taiwan, the applicability of the FTL should not be construed strictly, for this would create loop-holes in the protection of intellectual property rights in the ROC, and would run counter to world trends. Therefore, despite the fact that the defendant's business of supplying books differs from the plaintiff's main business of providing sporting competitions and enter-tainment, the FTL should nonetheless be con-sidered to apply to this case.
The defendant stated in its defense that its use of "NBA" in its domain name was purely co-incidental, and that it had no intention to confuse. However, for FTL Article 20 to ap-ply it is sufficient merely that confusion ob-jectively arises. Whether the offender had malicious intent, whether the similarity arose by coincidence, and whether actual loss was suffered, need not be considered.
In its defense the defendant stated, among other things, that it had not breached the pro-visions of the TWNIC's Domain Name Dis-pute Resolution Policy. However, that policy has no legal force, and the criteria it applies are clearly different from those of FTL Article 20 Paragraph 1 Item 2. Whether or not the defendant's actions violated the policy, and whatever the content of that policy may be, are not matters that are binding on the court.
