SAINT ISLAND INTELLECTUAL PROPERTY GROUP

If a trademark owner finds out that his mark has been registered as a .tw country code top-level domain (ccTLD) by another party, he may file a complaint with an approved dispute resolution service provider based on Article 5.1 of the Domain Name Dispute Resolution Policy promulgated by the Taiwan Network Information Center (TWNIC). 
 
 According to Article 5.1 of the Policy, a complaint may be filed for any of the following grounds: 
 1. the Domain Name concerned is identical with 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 legitimate right or interest in the Domain Name; and
 3. the Registrant has registered or used the Domain Name in bad faith. 
 As regards whether the trademark referred to in Article 5.1 of the Policy must be a registered one, there have been divided opinions. 
 
 In a recent dispute over a registered domain name, the Institute for Information Industry, one of the two approved resolution service providers, clearly indicated in a Decision rendered on November 17, 2014 that the trademark referred to in Article 5.1 of the Policy need not be a registered one. 
 
 Television Broadcasts Limited (TVB), Hong Kong, launched a “MYTV” platform in November 2008 and has been using “MYTV” as a trademark on the web. It also filed applications to register the mark “MYTV” in Hong Kong, China and Taiwan on January 16, 2012, June 13, 2013, and May 28, 2014, respectively. However, a third party had applied for registration of “myTV.tw” as a domain name prior to registration of TVB’s trademark “MYTV” in Taiwan and provided on its website programs produced or broadcast by TVB, claiming that its website is a Mytv off-Hong Kong version. 
 
 In the Decision, the Institute indicated that since TVB has been using “MYTV” as a trademark on the web and many web users in Taiwan have good knowledge of it, “MYTV” should be deemed a trademark defined in Article 5.1 of the Policy regardless of whether it has been registered by TVB. The Institute further pointed out that as the domain name “myTV.tw” was registered and used in bad faith, the Registrant’s acts have hampered the normal commercial activities of TVB. The Institute thus held that the domain name should be transferred to TVB. 
 
 The Institute’s views are consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.