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The Tale of Two Skrines

 

Tatt Boon and Melissa take a look back to the "Skrine v Skrine" domain name dispute

This is a tale from the annals of this firm's own history concerning the fight for the domain name .

BRIEF INTRODUCTION TO DOMAIN NAME DISPUTES

For the lay person without a very clear idea of domain name disputes, here are a few key points to set the background to this story:

  1. At the risk of over simplifying the Domain Name System of the Internet – a 'domain name' in its most simplistic sense can be regarded as the distinctive name that identifies an address on the Internet. A 'website' can be regarded as the content which is then placed at this address.
  2. There are generic Top-Level Domains (gTLDs) e.g. '.com', '.org', '.net'. There are also country code domains e.g. '.my' or '.com.my' for Malaysia. is a gTLD domain name.
  3. Registering a gTLD would have to be done through a registrar accredited by the Internet Corporation for Assigned Names and Numbers (ICANN). There are over 1,000 such registrars all over the world.
  4. Registration agreements to register a gTLD with an ICANN-accredited registrar invariably incorporate the Uniform Domain-Name Dispute Resolution Policy ("UDRP"). Through the UDRP, each person registering a domain name ("Registrant") warrants that to his/her knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.
  5. If a Registrant has registered a gTLD domain name in violation of another's rights, a UDRP Complaint may be filed to seek cancellation or transfer of the disputed domain name. Complaints should be filed with an approved dispute-resolution service provider.
  6. It should be noted that any UDRP administrative proceedings do not detract from use of the courts as a means to resolve traditional trademark-based disputes involving domain names. Traditional dispute resolution methods may involve higher costs or more protracted timelines or both, but may be able to provide more remedies to a Complainant.

The Elements for a UDRP Complaint

For a UDRP Complaint to succeed, the Complainant will have to prove the following three elements:

  1. The Complainant has rights to a trademark or service mark to which the disputed domain name is identical or confusingly similar;
  2. The Registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
  3. The disputed domain name has been registered and is being used in bad faith.

THE CLASH OF THE SKRINES

The Complainant in this case was this very law firm, Skrine. The firm was formerly known as Skrine & Co. from inception in 1963 until 1 January 2000. Previously the firm used the domain name for its email addresses e.g. This e-mail address is being protected from spambots. You need JavaScript enabled to view it .

The Background Facts

In April 1999, the disputed domain was found to have been registered in the name of My Information Centre Sdn Bhd ("My Info"). At some point, My Info offered to transfer the domain name to the firm for a one-time payment, although this did not materialise.

On 30 December 1999, the firm filed a Writ of Summons in the High Court of Malaya against My Info and its director seeking an injunction and the transfer of .

The story then takes an interesting turn as it was subsequently discovered that the disputed domain had been re-registered in the name of one Skrine Low Chit Sin from 17 January 2000.

The firm filed its UDRP Complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center in August 2000 seeking the transfer of ("Complaint"). The Complaint was registered under WIPO Case No. D2000-1105.

The Complaint named the new Registrant, Skrine Low Chit Sin as First Respondent. The Complaint also named My Info as Second Respondent, and the party who had been named as administrative, technical and billing contact in the domain's registration as the Third Respondent.

The First UDRP Element: Establishing the Complainant's Rights

It would be immodest to elaborate on the various reasons which were put forth by the firm to show that it had acquired reputation and goodwill in the name "Skrine". Suffice to say, the firm maintained that as a consequence of its long and extensive use from 1963, it had acquired rights to the name. The firm also maintained that due to the rarity of the name "Skrine", the name "Skrine" is distinctive of and associated exclusively with the firm.

At this point it should be noted that location is by and large irrelevant to the First UDRP Element i.e. showing that the disputed domain name is identical or confusingly similar to a trademark or service mark belonging to the Complainant. If the Complainant legitimately holds registration of a trademark that is identical or confusingly similar somewhere in the world, then it generally satisfies the requirement. For unregistered marks, the Complainant must show that the mark/name is distinctively associated with the Complainant or its goods or services – again, irrespective of locality. Locality may however play a role in determining bad faith, the Third Element.

As regards this First Element, the Panel accepted that the firm had rights and legitimate interest in the name "Skrine" and further found that the name "Skrine" and the disputed domain name were identical and confusingly similar.

The Second UDRP Element: No Rights / Legitimate Interests belonging to the Registrant

The firm took the position that the First Respondent, the said Skrine Low Chit Sin, did not exist and was merely a fictitious character made up by the Second Respondent and/or the Third Respondent in order to frustrate the Complainant's attempts to obtain the transfer of .

The Complaint set out various indications that the Registrant / First Respondent's particulars were false, including that the town in China cited as the First Respondent's address did not exist. The Complaint also included various reasons to believe that the particulars of the Third Respondent – who had been named as administrative, technical and billing contact in the registration – were false.

The Panel found that the Respondents had been silent in response to these contentions. The Panel observed that the only response by the Respondents was that Skrine Low Chit Sin was a Malaysian working in China. The Panel concluded that this assertion lacked credibility and subsequently concluded that the Respondents did not have any right or legitimate interest in "Skrine".

An observation to be made here is that if a person legitimately named Skrine Low Chit Sin really existed, then it may have been difficult to show that the Registrant did not have legitimate interests to a domain name which incorporates his own name.

The Third UDRP Element: Bad Faith

The UDRP provides a non-exhaustive list of circumstances which may reflect bad faith. These are summarised below.

  1. Where the disputed domain name was registered / acquired primarily for the purpose of selling it to the trademark owner (or a competitor) for profit or commercial gain.
  2. Where the disputed domain name was registered in order to prevent the trademark owner from doing so, and where it can be shown that the Registrant has engaged in a pattern of such conduct.
  3. Where the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor.
  4. Where the disputed domain name is used to intentionally profit from the goodwill of another e.g. attempting to attract Internet users to the Registrant's web site or other on-line location by using a domain name that is confusingly similar with a mark belonging to the Complainant.

The Panel held that the registration of by the Respondents was in bad faith in the circumstances. The Panel referenced the Respondents' admission that they had demanded payment for transfer of . The Panel also referred to the fact that the Respondents had not replied to a specific allegation by the firm that the Respondents had similarly hijacked a large number of other renown names in Malaysia, including the names of well-known law firms, public listed companies, stock exchanges, government bodies and political societies, such as: , , , , , , , , , , , and .

CONCLUSION

In a decision dated 1 December 2000, the Panel ruled that the domain name be transferred to the firm. This is illustrative of the expediency of filing a UDRP Complaint for an aggrieved party seeking the transfer or cancellation of a disputed domain name in a quick resolution of the dispute.

And thus ends the tale of the domain name of Skrine's website found at: www.skrine.com.

As a side note, the domain name was later the subject of a separate UDRP Complaint: Sime Darby Berhad Malaysia v. Mr. Sim e-Darby (WIPO Case No. D2001-1254) and like the Tale of Two Skrines, had a happy ending!

Writers' e-mail: This e-mail address is being protected from spambots. You need JavaScript enabled to view it & This e-mail address is being protected from spambots. You need JavaScript enabled to view it

 

 

SUBJECT MATTER: CASE COMMENTARY

WRITERS' NAMES: LEE TATT BOON (L) & MELISSA LONG (R)

WRITERS' PROFILES:

Tatt Boon is the Senior Partner and the Head of the Intellectual Property Division of SKRINE.

Melissa is an Associate in the Intellectual Property Division of SKRINE. She graduated from King's College London in 2009.

 

 
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