The appellant alleged that he had a prior bona fide use of “V-KOOL” trademark and then applied to register the term as the domain name, and that he did not infringe the right of the plaintiff’s trademark. The appellant can still use the trademark on the goods of window film as previously used and was not restricted by the right of the trademark. Nevertheless, according to the social norm and the trade usage of the market, the act of using the trademark at issue on the domain name is not a type of conducts directly using the trademark on the products. Furthermore, the trademark at issue is well-known to the relevant establishments or consumers. The act that the appellant used the term “V-KOOL” as the domain name has the nature of unfair competition consisting of free riding on the reputation of the trademark at issue. Moreover, the domain name is a string of words separated by dots used on the Internet in order to identify a computer or a set of computers, and is used to identify the position of the computer(s) during the process of information transmission. By contrast, “use of a trademark” means the act of using a trademark which is capable of being recognized by relevant consumers as a trademark in the course of trade.

Consequently, in light of the fact that the two are different concepts and legal relations, the act that the appellant used the name of “V-KOOL” on the domain name has gone beyond scope of prior bona fide use on the goods of window film. The appellant thus has no immunity.

Bona fide use, Unfair competition