Complaint against He Hsin Technology Company, Ltd. for improper registration of "Manulife," another party's well-known business symbol, as a domain name in violation of Article 24 of the Fair Trade Law
Case:
Complaint against He Hsin Technology Company, Ltd. for improper registration of "Manulife," another party's well-known business symbol, as a domain name in violation of Article 24 of the Fair Trade Law
Key Words:
exploiting the fruits of another's labor, passing off another's business reputation
Reference:
Fair Trade Commission Decision of November 15, 2001 (the 523rd Commissioners' Meeting); Letter (89) Kung Tsan Tzu 8906778-007
Industry:
Network Information Services (7321)
Relevant Law:
Article 24 of the Fair Trade Law
Summary:
1. Manulife Taiwan sent a letter of complaint to the Fair Trade Commission (FTC), summarized as follows: Manulife Taiwan was established in 1992 to provide insurance products and services, and the company has a long history in the Asian insurance industry as a whole, having entered the China market as early as 1897. Manulife is Canada's largest financial group. Manulife also perform well in Chinese Taipei and has been the subject of reports in the news media. The English "Manulife" is the foreign-language name of the complainant's parent company in Canada, and exclusive rights to use of that name are owned by that company. The complainant was authorized to register "Manulife" as a service mark, one widely recognized both by the relevant enterprises and consumers. The respondent, He Hsin Technology Company, Ltd. (He Hsin) used the English name "manulife" in registering a web address, www.manulife.com.tw, with the Taiwan Network Information Center (TWNIC). After being contacted by the complainant, the respondent He Hsin demanded a sum of US$60,000 from Manulife for transferring the "manulife" web address. The respondent He Hsin is a company engaged in development and sales of computer hardware and software, established and registered on 10 May 1996. Its English and Chinese names are unconnected with "Manulife," and it did not use the "manulife" web address after registering it. There is a likelihood that the respondent's conduct is in violation of Article 24 of the Fair Trade Law.2. After investigation, the FTC found as follows: The complainant, Manulife, was established in Chinese Taipei in 1992, using "Manulife" as its English name and registering the same name as its service mark that year. The mark was designated for use on insurance companies, banks, trust companies, securities investment trust companies, business management and financial management services, investment consulting services and securities investment consulting services. From 1992 to 2000 it spent NT$55 million on advertising, with insurance revenues of NT$2 billion and a market share in the Taiwan insurance market varying between 0.06% to 0.09%. The complainant stated it was Canada's largest financial group, and that it ranked in the top 15 in total assets among the 1,400 life insurance companies in North America; the complainant, however, never achieved more than a 1/1,000th share in the Taiwan insurance market. Given the limited nature of its market share and the volume of its advertising, it cannot be concluded that the complainant's service mark "Manulife" is a well-known symbol among relevant enterprises or consumers.3. The complainant maintained that the respondent was attempting to pass off the complainant's business reputation. By adopting the domain name in question, the respondent was alleged to use the complainant's well-known English company and service mark name, causing relevant enterprises and the average consumers to mistakenly believe the website was operated by or related to the complainant. This meant that the complainant would be forced to use some other variation of the name and lose opportunities for online business. The FTC found, however, that the respondent is a computer company, registered for business in areas unrelated to the complainant, and primarily having to do with software design and development and business in communications and electronics. No website has currently been set up at the given web address, nor has the respondent made application with an IP provider. While it may be true that the explanation given by the respondent for their selection of the "manulife" name is somewhat strained-that it means "managing a new universal life" in the new generation of telecommunications-the fact remains that the complainant's English company name and service mark "Manulife" cannot be counted as "a symbol commonly known to relevant enterprises or consumers," so there are insufficient grounds to find a likelihood that the respondent maliciously registered and used the domain name to pass off the complainant's business reputation. Furthermore, the complainant's Canadian parent company applied for the domain name "manulife.com" in 1994, and that name is available for use by the complainant. On 24 March 2001 the complainant also applied for the domain name "emanulife.com.tw," so the complainant should have other domain names available to enter and compete for business opportunities in the Internet market. Thus the current evidence suggests that the respondent did not hinder the complainant from entering the online market and obtaining business opportunities. Even granting that the complainant would have reason to consider the single word "Manulife" as important and economically valuable, the complainant should then have been correspondingly diligent in protecting the name and registered the domain name with TWNIC upon entering the Taiwan market. If the complainant was negligent in attending to such matters and suffered business losses as a result, such facts cannot justify censuring the respondent for legally registering or using the name. Thus, the respondent is not found to be in violation of Article 24 of the Fair Trade Law.Appendix:He Hsin Technology Company, Ltd.'s Uniform Invoice Number: 96964312Summarized by Tu, Hsing-Feng; Supervised by Yeh, Tien-Fu