TIPS^®  Taiwan Intellectual Property Special

The Fair Trade Commission Will Set A Guideline Regarding the Dispute Resolution of Domain Name

The Fair Trade Commission (“FTC”) made a preliminary conclusion in February that any petition with respect to “reverse squatting of domain name” will be overruled. The FTC will further promulgate a Guideline for reviewing cases involving domain name dispute.

The FTC indicated that so-called “reverse squatting of domain name” means that, the owner of a trademark which is not well-known shall not prohibit others from using the identical or similar mark as domain names. The FTC also categorizes four types of reverse squatting of domain name as follows:

1. The business competition of the trademark will not be influenced by the use of other persons as domain name.

2. The registration of domain name is not out of malice and the trademark owner simply desires to take use of administrative procedure to deprive other’s domain name.

3. The petitioner, namely the trademark owner, has registered her domain name by using other symbol or mark before she files the FTC petition.

4. Prior to the registration of the disputed domain name, the trademark has yet to register with the IPO in Taiwan and has never recognized by the competent authority as a well-known or famous mark.