TIPS^®  Taiwan Intellectual Property Special

Application of Foreign Legal Principles on   “bosch.com.tw” Domain Name Dispute

Respondent (the plaintiff), a used car dealer in Taiwan, registered “www.bosch.com.tw” (the domain name at issue) with TWNIC (the domain name registrar of “.tw” domains) in 2000. The plaintiff claimed that his “BOSCH” is an abbreviation of his company, “Boston of Super Car Hub.” The defendant, Robert Bosch GmbH (Bosch), as the trademark right owner of “BOSCH” offered to buy the domain name at issue in the amount about US$ 1500, but the offer was rejected. Bosch then filed a complaint with the Science and Technology Law Center (STLC), Institute for Information Industry (III), which issued a decision of transferring the domain name at issue to Bosch. Unsatisfied with STLC’s decision, the plaintiff initiated a lawsuit in Taipei District Court, requesting an declaration judgement to confirm his right on the domain name at issue exists, and also asking the court to vacate the STLC’s decision of transfer. The District Court judge applied the U.S. “Anticybersquatting Act,” finding that the plaintiff’s act of registering a domain name containing a trademark of another trademark has prevented the trademark owner from exercising exclusive rights of the trademark, and therefore ruled in favor of the defendant (Complainant), Bosch. The judgement of Taipei District Court is summarized below.

The STLC is one of the dispute resolution service providers in Taiwan. The domain name dispute resolution should be handled pursuant to the TWNIC Dispute Resolution Policy (the Policy), which provides in Article 5 that

“A complainant may, on the grounds that the below-listed circumstances exist in respect of the Registrant's Domain Name registration, file a complaint with a provider pursuant to this Policy:

1. The Domain Name is identical or confusingly similar to a trademark(s), mark(s), personal name, business name, or other emblem(s) of the Complainant;

2. The registrant has no rights or legitimate interests in respect of the Domain Name;

3. The registrant has registered or used the Domain Name in bad faith.”

The defendant, Bosch, owns “BOSCH” trademark registered in Taiwan since 1962, used on electronic appliance, machinery, auto-accessories, and etc, and holds the domain name “www.bosch.com.” The plaintiff registered the disputed domain name “www.bosch.com.tw” in 2000. Long before then, Bosch had been marketing under BOSCH trademark in Taiwan for years, and its generators and spark plugs are famous, as well as mechanical appliance such as electric drills. The plaintiff is in the business of selling used cars. It is unlikely that he was unaware of BOSCH trademark. Although the plaintiff claimed that he registered the domain name at issue because “bosch” is the abbreviation of his company’s name, the general public is more likely to associate “www.bosch.com.tw” with the defendant Bosch, rather than the plaintiff’s company. The plaintiff further claimed that the purpose he registered the domain name at issue was for a website to sell high-end used cars, such as BMW. However, from examining the evidence presented by the plaintiff and visiting the website corresponding to the domain name at issue, it was hard to find out any sign of commercial activities on the website. The fact that the plaintiff registered the domain name at issue after Bosch use the mark for several decades, without actually conducting any commercial activities indicated the intent to register the domain name may be questionable.

The U.S. Congress enacted “Anticybersquatting Consumer Protection Act” (ACPA) in 1999 to prevent bad faith registration of a domain name containing a trademark of another without legitimate interests. Unfortunately, there is no similar legislation in Taiwan. However, the principles underlying Article 5 of the TWNIC’s Policy are similar to the ACPA. In other countries, registering a domain name containing another’s trademark, without actually conducting any commercial activity on the website corresponding to the domain name in question, has been ruled as one of the factors for determining bad faith registration for the purpose of a domain name dispute resolution. Under the comparative law theory, the factor can be used to determine the bad faith of the registrant (the plaintiff) in the present case. Furthermore, in addition to the domain name at issue, the plaintiff holds 6 other domain names containing trademarks of others, some of which are famous marks. The facts constitutes “registering or using the domain name in bad faith” as stipulated in Article 5 of the TWNIC’s Policy. The plaintiff’s registration prevented Bosch from exercising the rights to use “BOSCH” trademark which the defendant company has been holding for several decades. The lack of commercial activities on the plaintiff’s website indicated that the purpose of plaintiff’s registration of the domain name at issue was to prevent the defendant, BOSCH, from registering such domain name. The plaintiff has no legitimate interest on the disputed domain name. Therefore, according to Article 5 of the TWNIC’s Dispute Resolution Policy, the domain name “www.bosch.com.tw” should be transferred to the defendant, Bosch, as STLC ordered.