Disputes over Malaysian Registered Domain Names

Sri Sarguna Raj explains the dispute resolution process for Malaysian registered domain names

 

 

WHAT IS A DOMAIN NAME?

A domain name is the address of a website which is intended to be easily identifiable and remembered. Every computer on the internet has a unique address which consists of a long string of numbers called an Internet Protocol (IP) address.

 

As it is difficult to remember every IP address, a domain name simplifies the address by allowing a familiar series of alphabets (the domain name) to be used. A domain name may be a combination of top and second level domains which identifies one computer from the millions of others connected to the internet.

 

 

WHAT IS A DOMAIN NAME DISPUTE?

A domain name dispute is a dispute between the registrant (“Respondent”) of a domain name and another party (“Complainant”) concerning who has the right to the registration and/or use of the domain name in question. A common cause of dispute is infringement of registration.

 

John Olsen in Domain Names Global Practice and Procedure, Sweet & Maxwell, London, classifies domain name pirates into three groups:-

 

(1) cyber squatters who register a name with the aim of selling the domain name to a trade mark owner for profit or commercial gain;

(2) activists who register confusingly similar domain names, misleading internet users to sites that carry propaganda for a cause and against the company; and

(3) typo-squatters who hope that a common misspelling of a domain name will lead and possibly attract internet users looking for the genuine site to their site.

 

 

REGISTRATION OF ".my" DOMAIN NAMES

Malaysian Network Information Centre Berhad (MYNIC), an agency of the Ministry of Science, Technology and Innovation (MOSTI) is the sole administrator and registrar for web addresses that bear the country code ".my". MYNIC administers 8 domain name categories, including ".my", ".com.my", ".net.my", ".org.my", ".edu.my" and ".gov.my".

 

 

WHAT GOVERNS DOMAIN NAME DISPUTES?

 

In Malaysia, domain name disputes are settled through domain name dispute resolution procedures set out in MYNIC's Domain Name Dispute Resolution Policy (MYDRP).

 

MYDRP is an administrative process with similar goals as the Uniform Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). It is designed to provide efficient, effective and affordable resolution of ".my" domain name disputes.

 

A domain name registrant with MYNIC must agree to be bound by the MYDRP – they cannot register a domain name without agreeing to do so.

 

Apart from commencing dispute resolution proceedings, the Complainant and Respondent may, and are strongly encouraged to explore having the domain name dispute settled through negotiations, mediation, conciliation or any other alternative dispute resolution process.

 

 

WHO PROVIDES DOMAIN NAME DISPUTE RESOLUTION PROCESS IN MALAYSIA?

 

MYNIC has appointed the Kuala Lumpur Regional Centre of Arbitration (KLRCA) as the dispute resolution service provider for the ".my" domain name. All domain name disputes are governed and administered in accordance with the MYDRP and KLRCA Supplemental Rules.

 

The KLRCA will manage the entire domain name dispute resolution process including receiving all relevant documents from the Complainant and Respondent, appointing the persons (Panel) who will make the decision in respect of a complaint and communicating with the Complainant, Respondent, Panellists and MYNIC.

 

 

 

HOW IS A DOMAIN NAME DISPUTE PROCEEDINGS INITIATED?

The Complainant initiates a domain name dispute proceeding by submitting a complaint in respect of the Respondent’s registration and/or use of a domain name to the KLRCA. The Complainant then pays KLRCA the fees, following which the KLRCA sends the complaint to the Respondent.

 

The Respondent in turn submits a response to the KLRCA. The response must specify why the Respondent should be allowed to keep the registration and use the domain name. The Complainant may reply to the response, after which a Panel will be appointed by the KLRCA to decide the proceedings.

 

 

WHAT MUST BE ESTABLISHED TO SUCCEED IN A DOMAIN NAME DISPUTE?

The following elements must be established if a Complainant is to succeed in a claim in a domain name dispute:

 

(1) that the disputed domain name is identical or similar to the trade mark or service mark to which the Complainant has rights; and

(2) that the Respondent registered and/or used the disputed domain name in “bad faith”.

 

 

 

WHAT CONSTITUTES BAD FAITH?

Paragraph 6 of MYDRP lists circumstances in which a domain name is registered in “bad faith”. However, one should note that the list of circumstances is neither exhaustive nor conclusive.

 

Evidence of registration and/or use of a domain name in bad faith may include, among others, the following:-

 

(1) The registration and/or use of the domain name is mainly to sell, rent or transfer the domain name for profit to the Complainant, its competitor or the owner of the trade mark or service mark; or

(2) The domain name is registered and/or used to prevent the owner of a trade mark or service mark from using the domain name which is identical with its trade mark or service mark; or

(3) The domain name is registered and/or used to disrupt the business of the Complainant; or

(4) The domain name is registered and/or used for the purposes of and with the intention to attract or divert, for commercial gain, internet users to a website of the Respondent or of a competitor of the Complainant or some other website or online location by creating a possibility of confusion or deception that the website or online location is operated or authorised by, or otherwise connected with the Complainant and/or its trade mark or service mark.

 

In addition to the circumstances of bad faith listed in MYNIC’s Policy, it was held in Hugo Boss AG v Eppies Internet (Case No. rca/dndr/2004/02) that the registration of domain names in bulk may constitute bad faith as the Respondent could be seen as a domain name squatter hoping to gain financially from any of the registered domain names.

 

Similarly, in Apple Inc v Eppies Internet (Case No. rca/dndr/2008/12), applying the case of Hugo Boss, a pattern of registering domain names utilizing well-known trade marks in which the Respondent has no rights or interests formed the basis of a finding of bad faith in registration.

 

 

REMEDIES IN A DOMAIN NAME DISPUTE PROCEEDING

The only remedies available to a Complainant in a domain name dispute proceeding is to request for a transfer of the registration of the domain name to the Complainant or a deletion of the registration of the domain name in question. The Complainant is not entitled to other relief such as pecuniary damages.

 

 

MALAYSIAN DECISIONS

 

Volkswagen Group Singapore Pte Ltd v Webmotion Design (Case No. rca/dndr/2003/01(int))

 

One of the earlier cases relating to domain name disputes is the Volkswagen case. The domain name in dispute in the case was “volkswagen.com.my” which was initially registered by Willy Marketing (“WM”). The Complainant issued a cease and desist letter to WM. Subsequently, the domain name was re-registered by the Respondent. The Complainant contended that the domain name in question was identical to the trade mark owned and registered by the Complainant, hence the Respondent’s use and registration of the domain name was illegitimate.

 

The Complainant argued that there was bad faith on the part of the Respondent as the latter had made a verbal offer to sell the disputed domain name to the Complainant.

 

The Panel found that the distinguishing and relevant part of the domain name was the term ‘Volkswagen’, which was identical to the Complainant’s trade mark. The Respondent had failed to establish any right or legitimate interest in the domain name. The Complainant also succeeded in proving bad faith on the part of the Respondent. The Panel directed the domain name to be transferred to the Complainant.

 

Nikon (Malaysia) Sdn Bhd v First Web Enterprise (Case No. rca/dndr/2008/14)

 

In this case, the disputed domain name was “www.nikon.my”. Although the Complainant contended that they owned the "Nikon" trade mark, the registration certificate showed that the owner of that trade mark was Nippon Kogaku KK, and not the Complainant.

 

In relation to the first element, the Panel found that the domain name was confusingly similar to that of the "Nikon" trade mark as it was likely that a significant number of internet users who clicked on the domain name would have expected to be led to a Nikon-related website.

 

The element of bad faith in this case was more difficult to prove. Certain specific allegations that could have augmented the Complainant’s allegations against the Respondent were disregarded by the Panel for non-compliance with MYDRP rules as they were not raised initially but only in response to allegations made by the Respondent.

 

The Panel found that there was no evidence to support the Respondent's assertion that the domain name was intended for a website to serve as a user forum or blog for Nikon users. In addition, the Panel observed that if the Respondent had intended to establish a user forum or a blog, it would have been more logical to use an individual name as opposed to a business name which suggests that the website was intended for commercial purposes. Further, the Respondent’s registered description of its business suggested that the Respondent held several other domains. Based on the above cited evidence, the Panel held that the Respondent had registered the disputed domain name in bad faith.

 

As the Complainant had failed to show any connection with Nippon Kogaku KK or any licence or authorization to use the trade mark, it was held that the Complainant failed to establish its rights to a trade mark or service mark that the domain name is alleged to be identical or confusingly similar to. Thus, notwithstanding that the Complainant had succeeded in establishing bad faith on the part of the Respondent, the Panel, with great reluctance, rejected the complaint as the Complainant had failed to establish its rights to the Nikon trade mark.

 

The case of Nikon (Malaysia) is one of the few cases in which the complaint was rejected and disputed domain name, ordered to remain.

 

BDMG Pte Ltd v Acme Positive Sdn Bhd (Case No. rca/dndr/2008/16)

 

In this most recent case of domain name dispute, the Respondent's right to use the domain name “mumcentre.com.my” was disputed by the Complainant.

 

The Respondent argued that it was the legitimate, registered company using the domain name with the agreement and participation of the Complainant who had been involved in the planning and implementation of the Respondent's business operations for almost two years. The Respondent contended that the Complainant was attempting a reverse hijacking of the domain name.

 

The Complainant did not deny that it was once involved in the Respondent's business but argued that the business relationship under which the Respondent was authorised to represent the Complainant and its products and services had terminated, resulting in the cessation of the Respondent's right to use the disputed domain name. This argument was not countered by the Respondent. Instead, they submitted that there was no trade mark violation due to non-registration of the trade mark by the Complainant.

 

The Panel held that the domain name incorporated the Complainant’s trade mark "MumCentre" and that the disputed domain name was identical to the Complainant’s mark.

 

It was held that although there was no trade mark infringement, the Respondent could not claim rights to the continued use of the trade mark. As the Respondent had not denied that their authority to use the trade mark had ceased, they were no longer in the position to assert any right or legitimate interest in the trade mark and the use of the disputed domain name. Continued use of the same would be done so in bad faith. The Panel directed that the disputed domain name be transferred to the Complainant.

 

 

CONCLUSION

In order to succeed in a domain name dispute, the Complainant must establish that the disputed domain name is identical or similar to the trade mark or service mark to which the Complainant has rights and that the Respondent had registered and/or used the disputed domain name in bad faith. As it can be seen in the Nikon (Malaysia) dispute, the failure to do so may be fatal to the Complainant’s case.

 

It is interesting to note that since the first domain name dispute decision by KLRCA in 2003, only 11 other cases have been decided so far.

 

 

 

 

SRI SARGUNA RAJ ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

 
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