An amendment to the Internet Address Resource Act ("IARA") providing protection of domain names in Korea was announced on June 9, 2009, and will be effective as of September 10, 2009. The major provisions of the amendment are as follows.
The amended IARA will cover generic top level domain names (gTLDs).
Currently, a number of domain name registrants have filed action in the Korean courts to prevent a decision rendered under the Uniform Domain Name Dispute Resolution Policy ("UDRP") from being implemented by the registrar. When such a case is brought before the Korean courts, according to Korean Supreme Court precedent, the applicable law is not the UDRP, but rather the relevant laws of Korea, such as the Trademark Act and the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA"). Therefore, under current practice, a UDRP petitioner should argue trademark infringement based on its trademark registration in Korea and/or prove the fame of its mark in Korea under the UCPA in order to prevail in such a court action.
The UDRP petitioner may now also raise a claim under the IARA because the scope of the IARA, which is currently applied to country code top level domain names (ccTLDs; KR domain names) only, will be extended to gTLDs. The IARA prohibits "registering, maintaining or using a domain name in bad faith for the purpose of preventing a legitimate right holder from registering the same or in order to obtain an unlawful gain from the right holder," and, unlike the UCPA, there are no express requirements for a local trademark registration or local fame thereunder. However, although there are few cases under the IARA to provide guidance, the major opinion is that a foreign party should have a legitimate right provided by the Korean laws (e.g., trademark registration or local fame) in order to successfully challenge an action seeking to enjoin enforcement of a UDRP decision. Thus, it may not be easy to convince a Korean court of the foreign party's legitimate rights in a domain name or the registrant's bad faith, based on evidence from abroad only.
We may seek transfer of domain names under the amended IARA.
Under the current remedies against domain name cyber-squatting provided by the UCPA, petitioners may seek only de-registration of domain names before the Korean courts. However, under the amended IARA, petitioners may seek transfer of domain names as well as de-registration. Considering that petitioners have to risk the possibility of a third party's prior registration even after a successful court action due to the uncertain timing of de-registration by the registrar, such amendment will provide greater certainty and convenience in recovering domain names.
Registrars should confirm registrants' identity in registering domain names.
According to the amended IARA, Korean registrars should confirm the identity of the registrant when a domain name is registered and if the registrant's identity is confirmed later to be false, the registrar should de-register the domain name. Such remedy would help to identify the registrant when a petitioner wishes to recover a domain name, particularly considering that many domain names are not registered under the registrant's real name.
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