DOMAIN NAMES DISPUTES

It is clear that registration of domain

names are easily available in Malaysia,
but the critical issue that remains
unresolved is the right to ownership of
such domain names for it raises
domain name disputes between trade
mark and service mark owners and
cybersquatters.
 DEFINITION OF DOMAIN NAME
DISPUTE
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.
 Section 70B of the Malaysian Trade
Marks Act 1976
Sets out provisions with regard to protection
of well known marks in Malaysia.
Proprietors of well known marks are entitled
to restrain by way of injunction the use of any
mark that is identical or nearly resembles
well known trade marks or an essential part
of the well known mark without its
proprietor's consent and where such
unauthorised use would likely to deceive or
cause confusion to members of the public.
 MYNIC's Agreement for Registration
of Domain Names
Clause 2.6 that it is not the duty nor responsibility of
MYNIC to screen requested domain names to determine
whether the Registrant is entitled to register or have
any rights in the domain name or whether the domain
name may infringe upon the right(s) of a third party";
Clause 3.3, Clause 3.6 and Clause 3.7 of MYNIC's
Agreement for Registration of Domain Names imposes
the obligations on all applicants and registrants of
domain names.
Clause 12 of MYNIC's Agreement for Registration of
Domain Names stipulates obligations pursuant to the
governing laws and jurisdiction for the Agreement
 DOMAIN NAMES DISPUTES
Despite the explicit, clear and precise stipulations that the
Agreement is subjected to the statutes and enactments of
Malaysia, (including the provisions of Section 70B of the
Malaysian Trade Marks Act 1976), registration of domain
names using derivations from well-known marks are still
permitted to parties who do not possess sufficient goodwill
and/or any legitimate expectation in intellectual property for
ownership of domain names.
Although there are many situations where cybersquatters
privy to the Agreement and having been ordered to transfer
domain names to rightful owners of well known marks,
there has been no initiative to commence legal action
against cybersquatters in their contractual capacity as
provided for by the Agreement.
 MALAYSIAN DECISIONS
Nikon (Malaysia) Sdn Bhd v First Web Enterprise (Case No. rca/dndr/2008/14)
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.
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.
Mala Fide in this case was difficult to prove. Certain specific allegations that could have augmented the
Complainants 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.
It was 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, it was 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 Respondents 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.
Since 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.
 MALAYSIAN DECISIONS
Volkswagen Group Singapore Pte Ltd v Webmotion Design (Case No.
rca/dndr/2003/01(int))

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 Respondents use
and registration of the domain name was illegitimate.

It was 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 Complainants 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.
 MALAYSIAN DECISIONS
BDMG Pte Ltd v Acme Positive Sdn Bhd (Case No. rca/dndr/2008/16)

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.

It was held that the domain name incorporated the Complainants trade mark "MumCentre" and that
the disputed domain name was identical to the Complainants mark.

The final decision was 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.
 RESOLUTION OF DISPUTES
The Malaysian Court still retains jurisdiction to adjudicate domain
name disputes.
They have indeed monumentally protected the rights of well-known
marks in Petroliam Nasional Berhad & Others v Khoo Nee Kiong
[2003] 4 MLJ 216 that concerned registration of domain names
namely 'petronas-dagangan.com', 'petronasgas.com',
'mypetronasdagangan.com', and 'mypetronas.com', its respective
derivation being constituted of the "PETRONAS" mark, a significant
household mark in Malaysia belonging to the proprietor Plaintiff.
In this case, the Malaysian Court granted prohibitory injunctions
against the Defendant preventing continuous use of the infringing
domain names.
Similarly, in the decision of Intel Corporation v Intelcard Systems
Sdn. Bhd. & Others [2004] 1 MLJ 595 the Malaysian Courts
granted an interim injuction whilst affording protection to the Plaintiff,
the proprietor of a worldwide well-known mark.