Newsletter
FIRST TWNIC DOMAIN NAME DISPUTE DECISION AN-NOUNCED
On 6 August 2001 an expert panel delivered its decision in the first domain name dispute han-dled under the new Domain Name Dispute Resolution Policy of the Taiwan Network In-formation Center (TWNIC). The panel was appointed by the Science and Technology Law Center of the Institute for Information Industry, which is recognized by the TWNIC as a dispute resolution service provider. The panel deter-mined that the right to use the domain name "http://www.m-ms.com.tw" should be trans-ferred to the complainant, Mars Incorporated of the USA.
Mars, Inc. is the owner of the M&M's chocolate products trademark. It asserted that M&M's is a well known trademark; that the second-level domain name "m-ms" in the domain name http://www.m-ms.com.tw is similar to its trademark; and that the original registrant had no right or legitimate interest in registering the domain name. It also claimed that the original registrant was attempting to create confusion with Mars' registered trademark, in order to mislead Internet users into visiting the regis-trant's web site. In its defense, the registrant de-nied the above allegations, and asserted that it had lawfully obtained registration of the domain name, and that its areas of business activity were different from those of the complainant.
After examining the domain name as a whole and comparing its distinctive portion with the trademark in question, the panel determined that "m-ms" is acoustically and visually similar to the main textual portion of the M&M's trademark. The registrant provided no positive evidence of its right to use the domain name, or of its le-gitimate interest in using it. The panel also found that "M&M's" is a well known trademark, and the registrant was aware it was the famous mark of another, yet applied to register a domain name similar to the main textual portion of that mark. Such action would take unfair advantage of the product quality and company reputation identi-fied by the complainant's trademark.
The panel also noted that Internet users often attempt to guess the second-level domain name registered by a company, on the basis of its company name or the distinctive portion of its trademark. The characters that may be used in a Latin-script domain name do not include the punctuation marks "&" and " ' ", so it is highly likely that consumers may mistake "m-ms" for "M&M's", and be misled into believing that the products and services referred to in the web site content were those supplied by the complainant.
Therefore, the panel found that the original reg-istrant's registration of the domain name would result in Internet users being enticed or misled into visiting the registrant's site, and that the right to use the domain name "m-ms" should be trans-ferred to the complainant.