Real Media Technology Co., Ltd. was complained for using Sony Computer Entertainment's well-known Trademark "Playstation" as a domain name in violation of the Fair Trade Law
Case:
Real Media Technology Co., Ltd. was complained for using Sony Computer Entertainment's well-known Trademark "Playstation" as a domain name in violation of the Fair Trade Law
Key Words:
counterfeiting, symbol, similar or identical use, confusion and misidentification, domain name
Reference:
Fair Trade Commission Decision of September 27, 2001 (the 516th Commissioners' Meeting)
Industry:
Computer Software Services (7201)
Relevant Laws:
Summary:
1. The respondent Real Media Technology Co., Ltd. had registered Playstation as a domain name but had not yet used the domain name. At issue in this case was whether these actions constituted use of a well-known mark of the complainant or of a symbol representing the complainant's business or services, such as would cause confusion with the complainant's business or service facilities or activities in violation of Article 20(1)(ii) of the Fair Trade Law (FTL). The complainant had obtained registrations for trademarks including "Playstation" and the "PS device" on 31 March 1995. The scope of the registration covered goods such as computer game consoles and cartridges, but did not encompass the provision of "game information" services. The respondent's business scope, as specified on its business license, is website installation and network design. The respondent's affiliate Hsing Tsuo Tours is engaged in the travel business. The respondent filed for registration of the domain name "Playstation.com.tw" on 1 October 1999 for purposes of setting up a website for use in providing "travel information" services. Hsing Tsuo Tours was to handle the ticketing services and travel itinerary planning. The website was to be used in cooperation by the two companies in providing to the public travel, vacation, and recreation services. Judging from the website design provided by the respondent and the business activities provided by the affiliate, the motive of the two firms in carrying out preparatory registration of the website did not involve the computer game market or any related realm, and the companies were not engaged in any business involving goods identical or similar to those of the complainant. And, objectively, a substantial causal link exists between the preparatory registration of the Playstation website and its intended use for promoting and selling the products of the affiliate Hsing Tsuo Tours. It is not a case of an enterprise registering a domain name for purposes unrelated to its own business, so it cannot be deemed a case of "malicious registration and use." 2. Also at issue is whether the respondent's registration (but not yet use) of Playstation as a domain name constituted use of a well-known mark of the complainant or of a symbol representing the complainant's business or services, and - even if it did not actually cause confusion - could still be considered passing off on the business reputation of another enterprise or obstructing another enterprise's access to the market, in violation of Article 24 of the FTL. The complainant filed for registration of its domain name "www.Playstation2.com.tw" on 3 November 1999, after the respondent filed for registration of the "Playstation.com.tw" domain name on 1 October 1999. Quite a few other domain names exist that are similar to these two in name, but all differ in the content of their registered business scope, so one cannot reach the conclusion that these website names should be restricted by the complainant's prior registration of the name [Playstation] under the Trademark Law. The respondent filed for registration of the domain name "Playstation.com.tw" on 1 October 1999 for purposes of setting up a website for use in providing "travel information" services. Hsing Tsuo Tours was to handle the ticketing services and travel itinerary planning. The website was to be used in cooperation by the two companies in the provision of travel and vacation planning services to the public. The preparatory registration of the website did not involve the computer game market or any related realm, and it could not be inferred that the respondent had maliciously registered and used the wording in the complainant's registered trademark for purposes of engaging in any business involving goods identical or similar to those of the complainant. The complainant filed for registration of its domain name for use in providing goods such as computer game consoles and cartridges in the computer market, whereas the respondent filed for registration of its domain name for use in travel and recreation business. The complainant did not produce any evidence that it had ever engaged in the travel or recreation business or had ever created a website dedicated to the travel or recreation business prior to the time the respondent filed for registration of the contested domain name. It is thus evident that the complainant's sale of video game consoles under the name "Playstation" and the business that the respondent intends to operate using the contested domain name are entirely unrelated to one another, and target completely different consumer groups. Thus, there is insufficient basis for a conclusion that the respondent intended to pass off on the complainant's business reputation. As for the allegation that the registration of the domain name would obstruct market access by the complainant, the complainant had filed for registration of the domain name "www.Playstation2.com.tw" for on-line sales and marketing purposes, and had also appointed Intertran Inc. as its Chinese Taipei general agent for sale of Playstation video game consoles and registered the website name "www.intertran.com.tw" for on-line sales and marketing purposes. Given that the complainant has these two website names at its disposal and that it can sell its "PSone" computer game console at list price on its websites, there is no basis for contending that it is unable to gain access to the Internet market and compete for trading opportunities in that market. The complainant has not submitted any other evidence that the acts of the respondent obstructed its access to the Internet or that the respondent had actively attempted to exploit its business reputation. Therefore, there was insufficient basis to conclude that the respondent had maliciously registered or used the name in a way that would affect market competition or the order of trade in violation of Article 24 of the FTL. Appendix:Real Media Technology Co., Ltd.'s Uniform Invoice Number: 16777506Summarized by Chiang, Kuo-Lun; Supervised by Wu, Ding-Hung