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SOLUTIONS

1. PRIORITISE IMPORTANT DOMAINS - Some people have multiple domain names registered in a number of
jurisdictions. Since the costs would be high in retrieving all the domain names, it is advisable to prioritise which
domain names that is likely to lose their business or damage their reputation.

2. WRITING TO THE REGISTRANT - The person who is in dispute could send a letter demanding the registrant to
terminate and discontinue using the domain name.

3. USE THE ISP'S TERMS AND CONDITIONS - When the user breach its ISP's terms and conditions, then complaints
can be made to the ISP and asks them to suspend the site. 

4. DISPUTE RESOLUTION - When a person registers gTLD, the UDRP is automatically incorporated into the
registration agreement. Countries not using ICANN's UDRP may use a different form of dispute resolution,
depending on the rules of that country's registry.

Uniform Domain-Name Dispute-Resolution Policy (UDRP)

UDRP is a mandatory procedure established by the Internet Corporation for Assigned Names and Numbers
(ICANN) for the resolution of disputes regarding the registration of internet domain names. It currently applies to
all gTLD (i.e. .com, .net, .org,) and some ccTLD (i.e. .mx and .ro). The procedure is essentially a formal arbitration
between the domain name owner and the party challenging their registration. This policy was drafted in close
cooperation with the World Intellectual Property Organization (WIPO).

Legislation in United States of America Anti Cyber Squatting Consumer Protection Act 1999

ACPA’s goal is to protect trademark owners from having to pay a cyber-squatter for a domain name that includes
their trademark. The Act creates a cause of action for anyone who registers or uses a domain name that is
confusingly similar to, or dilutive of, the trademark or personal name. Section 3(C) of ACPA, in any civil action
involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the
forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.

MYNIC’S DOMAIN NAME DISPUTE RESOLUTION POLICY (“MYDRP”)

In Malaysia, the Trade Marks Act 1976 requires that in order for infringement to be established, the trade mark
owner had to prove that the person had used an identical or confusingly similar mark “in the course of trade” in
relation to goods or services.

The MYNIC launched its Domain Name Dispute Resolution Service on April 17, 2003. The governance and
administration of domain name disputes for the “my” top-level domain is in accordance with the terms set out in
MYNIC’s MYDRP Rules and the Asian Domain Name Dispute Resolution Centre (ADNDRC) Rules.

The AIAC is the centre for providing dispute resolution under the MYDRP, that is, providing online dispute
resolution services for resolving disputes between the registrant of a “.my” TLD and a third party over the
registration or use of the name.

UDRP MYDRP
I. The domain name is identical or confusingly I. The Domain Name is identical or confusingly
similar to a trademark or service mark in which the similar to a trade mark or service mark to which
Complainant has rights, the Complainant has rights; and

II. The domain name holder does not legitimate II. The Domain Name has been registered and/or
interests in the domain name, and used in bad faith.
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III. The name was registered and being used in bad

faith

ADNDRC CASES

PORTCULLIS TRUSTNET (SINGAPORE) V GEORGE PATHMANATHAN A/L MICHAEL GANDHI NATHAN & ORS

Commission of tort of passing off regarding Portcullis Trade Marks and/or Portcullis Domain names toward the
Defendant. Passing-Off Definition: making some false representation likely to induce a person to believe that the
goods or services are those of another

Held:

Defendant’s were not entitled to the domain name. Plaintif (Portcullis) had goodwill and reputation on Portcullis
Domain Name. The above misrepresentation is calculated to confuse the public to believe that the services of 2nd
to 12th Defendants are that of the Plaintiff's because the Defendants have not made any attempt to correct or
withdraw the false statements.

SYKT FAIZA SDN BHD & ANOR V FAIZ RICE SDN BHD & ANOR AND ANOTHER 

Plaintiff Trademark & Domain Name: “Faiza” & www.faizarice.com

Defendant’s Trademark & Domain Name : “Faiz” & www.faizrice.com

whether the court may grant a perpetual quia timet injunction under s 52(3(e) of the SRA to restrain the use of a
domain name which is the subject matter of a tort of passing off and a tort of unlawful interference with trade;

Held:

To ‘prevent a multiplicity of judicial proceedings’ within the meaning of s 52(3)(e) of the SRA and to ensure finality
in litigation between all the parties in this case, I exercise my discretion under s 52(3)(e) of the SRA to order a
perpetual quia timet injunction to restrain defendants from using Faiz domain names — please see Portcullis
Trustnet (Singapore) Pte Ltd at paras 118–120.

Volkswagen Group Singapore Pte Ltd v Webmotion Design

The panellist construed “bad faith use” broadly so as to include inactive holding of a domain name. In
deciding on the issue of the respondent’s rights and legitimate interest, the Panel found that there was no
evidence on record to suggest that the respondent had made any use or preparation to use the domain name in
connection with the bona fide offering of goods or services, nor can there be any conceivable bona fide use of
adopting a well-known trademark. The respondent was not commonly known by the domain name and was not
a licensee of the complainant or otherwise authorised to use the complainant’s mark. The Panel, therefore,
concluded that on the balance of probabilities, the domain name was chosen by the respondent for its
fame.

NEP Holdings (Malaysia) Bhd v Liew Bin Dian t/a C & C Network

The Panel resolved that an intention to sell the disputed domain name to the complainant for a profit
amounts to an element of bad faith. Further, the Panel held that on the face of the webpage, it can be construed
that the appearance of the domain name, was with the intention to attract or divert for commercial gain, internet
users to the respondent’s website by creating a possibility of confusion or deception that the website

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and/or online location was operated or authorised by the complainant and its trademark. Finally, the Panel
held that the very fact that the respondent was previously engaged by the complainant as part of their team
imputed knowledge and intention of the respondent to register the disputed domain name (having
knowledge it had not been registered by the complainant) to profit from the same.

THE REQUIREMENTS OF BAD FAITH

Paragraph 6.1 of the MYDRP specifies that the evidence of a registration and/or use of a domain name
being in “bad faith” may include, among other things, the following circumstances:

Shandong Hengfeng Rubber & Plastic Co., Ltd v J Y

Bad Faith - to sell, rent or transfer  the  domain  name  for  profit 

Complainant Trademark Name: “Chang Feng” “Heng feng” “HIFLY” “shuangfeng”. Respondent Domain Name: 10
different domain names which includes the complainant’s trademark “chang feng””, “hifly”, “Shuang feng”, and
“heng feng”. The Respondent hasn’t yet registered “hengfeng”, “changfeng” or “hifly” in any category

In September 2010, the Respondent took the initiative to find the Complainant and claimed that he had registered
a group of domain names, ten in total and if the Complainant wanted to obtain these domain names, the
Complainant had to pay US$ 3500 transfer fee for each domain name. The Respondent then reduced the price to
$2800.

Held:

Evidence further shows that the Respondent actively contacted the Complainant and intended to sell the disputed
domain names to the Complainant at the price of US$ 3500 for each domain name (which was later reduced to
US$ 2800 each). This price is much higher than the necessary cost for registering a domain name.

Such an act constitutes the typical act of registration and use of domain name in bad faith as envisaged in
Paragraph 4(b) of the Policy, namely, the circumstances indicating that the Respondent has registered or
acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain
name registration to the Complainant who is the owner of the trademark or service mark.

FlyFirefly Sdn Bhd v Nikabina IT MSC Sdn Bhd

Bad Faith - to  prevent  the  trade mark or service mark owner from using the domain name 

The complainant received a proposal from Globalcomm Network to sell the disputed domain name
“www.firefly.com.my” for RM1,500,000, which was later reduced to RM500,000. Investigations by the
complainant’s private investigators indicated that the respondent and Globalcomm Network did not sell any
FIREFLY additives.

The Panel imputed this behaviour as amounting to an act of preventing the complainant, the trade mark owner of
the “Firefly” mark, from using the domain name incorporating its trade mark. The Panel ruled that there “is no
doubt that with the registration of the Domain Name www.firefly.com.my by the Respondent, the Respondent
has prevented the Complainant from using such Domain Name for its business”.

Siemens Aktiengesellschaft v Linda Scottle

Bad Faith - to disrupt the business of the complainant 

Complainant Trademark: Siemens

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Respondent Domain Name: “siemens-plc-adapter.com”

“SIEMENS”, “PLC”, “ADAPTER” and “.COM” constitute the domain name in dispute.

“PLC” means programmable logic controller that is one kind of goods that can be made by the Complainant.
ADAPTER is one type of goods that can be made by the Complainant.

The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of
the Complainant.

As a result, the domain name in dispute is used to sell cheap counterfeit goods with SIEMENS trademark so as
to attract and deceive customers all over the world and damage the reputation of the Complainant.

Held:

The evidence further shows that the website of the disputed domain name has been designed to sell similar
products trademarked “SIEMENS” as the Complainant. In fact, the Complainant has never authorized the
Respondent to use the trademark or sell these products.

This is exactly the type of bad faith use of the disputed domain name as identified in the Policy, i.e. the
Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other
on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship,
affiliation, or endorsement of the website or location or of a product or service on the website or location.

Netflowers Pte Ltd v Chan, Hong Mun t/a Mymall Dot Com Enterprise

Bad Faith - the  purposes  of attracting or diverting internet users for commercial gain 

The layout and the content of the respondent’s web site made it probable that the respondent was
invoking the name and concept of the complainant and its web site. Given the general tone of both web sites
and the way in which the merchandise was described which was so similar, the Panel found bad faith in both
the use and registration, although only one of the criteria need be established.

Alibaba Group Holding Ltd v (1) Domains By Proxy, LLC; and (2) Jinbo Liu

Complainant Trademark : "TMall"

Respondent Domain Name: "TMall.company"

Complainants Content that the Complainant's "TMALL" trade mark is a coined term not commonly used in English
or any other language independent of the Complainant's "TMALL" trade mark. This lends support to the
presumption that: (i) the Respondents' registration of the Disputed Domain Name, which incorporates the word
"tmall" in its entirety, was motivated solely to take advantage of the Complainant's reputation in the Tmall
Trade Marks

Held:

By using the domain name (TMall), the Respondents have intentionally attempted to attract, for commercial gain,
Internet users to the Respondents website or other on-line location, by creating a likelihood of confusion

MYDRP specifies that bad faith is not limited to the specific circumstances enumerated in paragraph 6.1,
panels have taken the liberty of finding bad faith beyond the factors in paragraph 6.1 of the MYDRP.

Transplace Texas, LP v Transplace Logistics Sdn Bhd

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The Panel held that the evidence of bad faith registration and/or use of the disputed domain name may include,
among other things, the circumstances identified from (i) to (iv):

The phrase “may include” clearly suggests that the circumstances identified in this paragraph 6.1 are not
exhaustive and may extend to other circumstances not covered by this paragraph, as long as they are within the
concept of “bad faith” registration and/or use.

Hotnet Sdn Bhd v Web Business Solutions Sdn Bhd

Involve two directors who were once employees of the complainant who “ought to have known the use of
the trade mark/service mark Marimari.com by the Complainant”. Despite this, the respondent, a company
in which they were directors, registered the disputed domain name and utilised it for a website
“www.marimari.com” to engage in the same/similar field of activity as that of the complainant. In several cases,
the panel has interpreted a respondent’s default as amounting to a failure by the respondent to demonstrate
that he has rights or legitimate interests in respect of the disputed domain name.

DEFENCES

• The respondent can rely on several defences under paragraph 7 of the MYDRP to show that he has not
registered and/or used the name in bad faith. These defences include:

• (1) use of the domain name or made preparations to use the domain name or a name corresponding to
the domain name in relation to a genuine offering of goods or services prior to being informed of the
complainant’s dispute;

• Usana Health Sciences, Inc v MyBids Enterprise  (usana.com.my)

The panellist ruled in favour of a respondent on the grounds that the respondent had adduced
evidence to show that prior to receiving notice of the complaint, it had used the disputed  domain 
name  to  make  a  genuine  offering  of  goods  and services.

• (2) the respondent is commonly known by the domain name even though he has not acquired any
right in the same trade mark or service mark; or

• (3) use of the domain name for legitimate, non-commercial and/or fair purposes without intent to use
the domain name for profits or to deceive the public.

• Cobweb Sdn Bhd v Infotouch Solution Provider

• The Panel ruled that the complainant had failed to prove bad faith as the respondent had
adduced some evidence in support of its assertion that it had not registered nor was it using the
domain name with  the  intention  of  attracting  or  diverting,  for  commercial  gain, internet
users to the respondent’s web site. Here, the Panel concluded that the complainant failed to
prove bad faith because the search results on Google and Yahoo! search engines using the
keyword “bestoffer” failed to locate any specific website as the results were numerous.

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REMEDIES

Shandong Hengfeng Rubber & Plastic Co. Ltd - The panel orders that the disputed domain names“hiflytires.com
hiflytyre.com 、 hiflytyres.com 、 changfengtire.com 、 changfengtyre.com” is to be TRANSFERRED to the
Complainant

Siemens v Linda - The Panel orderred that the domain name “siemens-plc-adapter.com” be CANCELLED.

Alibaba - The Panel orders that the Disputed Domain Name be TRANSFERRED to Complainant.