3.

0 Legal Framework and Legislation

Malaysia like many other countries has developed a legal framework to address these issues
and protect the rights of trademark owners specifically addressing conflicts over domain
names. This framework includes specific legislation, common law principles, and judicial
precedents that help create a robust system for resolving domain name disputes. Key
components of this framework are the Malaysian Communications and Multimedia Act 1998
(CMA 1998), and the Trademarks Act 2019.

Malaysian Communications and Multimedia Act 1998 (CMA 1998)

Section 233 of the Malaysian Communications and Multimedia Act 1998 (CMA 1998)
1
deals with the improper use of network facilities or network services, which can include
actions related to domain name abuse. While the Act does not specifically mention domain
names, it provides a broad framework to regulate activities conducted over networks, which
can encompass domain name-related abuses such as cyberbullying, harassment, or fraud.
Therefore, if someone engages in activities like cybersquatting or trademark infringement
using a domain name, they may be subject to legal action under Section 233 of the CMA
1998 for improper use of network facilities or services. To prove this point, the case of Mbf
Technologies (M) Sdn Bhd v Tommy Thomas & Anor 2 will be cited, whereby a Malaysian
company, filed a lawsuit against Tommy Thomas, who had registered a domain name that
was confusingly similar to another company's trademark. The domain name in question was
allegedly being used in a manner that could deceive consumers into believing it was
associated with or endorsed by MCA Technologies. The central issue was whether the
registration and use of the disputed domain name constituted an improper use of network
facilities or network services under Section 233 of the CMA 1998. The court found in favor
of MCA Technologies, ruling that the registration and use of the domain name by Tommy
Thomas was in bad faith and constituted improper use of network facilities. The court
emphasized that cybersquatting and misleading use of domain names are prohibited under the
broad framework of Section 233 of the CMA 1998. Another exemplary case back in 2010
would be VHS Properties Sdn Bhd v Khairuddin bin Abdullah & Anor 3, a real estate
company had discovered that the defendant registered a very similar domain name to their
own trademark, and in fact the defendant was using the domain name to host a website that
1
Communications and Multimedia Act 1998 (Malaysia) s 233
2
Mbf Capital Bhd & Anor v Tommy Thomas & Anor 1998 [HCKL]
3
Aimy Shuhaida Shaharuddin, 'Intellectual Property and Domain Name Dispute Resolution in Arbitration in
Malaysia: A Practical Guide' in Shearn Delamore & Co (eds), Arbitration in Malaysia: A Practical Guide
(Shearn Delamore & Co 2023)
contained false and defamatory information about VHS Prperties. The primary issue was
whether the registration and use of the domain name by Khairuddin bin Abdullah amounted
to improper use of network facilities under Section 233 of the CMA 1998. VHS Properties
contended that the actions constituted defamation and an abuse of the network services,
causing significant harm to their business. Both these cases effectively show how S.233 of
the CMA 1998 serves as a versatile legal rule in combating various forms of domain name
abuse relating to our question in hand.

Trade Marks Act 2019

The Trade Marks Act 2019, which replaced the Trade Marks Act 1976, provides enhanced
protection for trademarks in Malaysia, including provisions that can be applied to domain
name disputes. The new Act aligns Malaysia's trademark laws more closely and relatively
close with international standards which introduces several new provisions relevant to the
digital age, including domain names. With that said, S.54 of the TMA 2019 4mentions that if
a domain name incorporates a registered trademark without authorization and causes
confusion, this would be an infringement of the trademark. Despite not having cases directly
addressed under the mentioned act due to its recent introduction; in 2019 there are cases
under the Trademarks Act 1976 that support this discussion. In the case of Skyworld
Holdings Sdn Bhd & Ors v. Skyworld Development Sdn Bhd & Anor 5, the Federal Court
of Malaysia clarified the elements required to establish trademark infringement under Section
38 of the Trade Marks Act 1976 which is revised as Section 88 of the TMA 2019. This case
involved a dispute between Skyworld Holdings Sdn Bhd & Ors, registered owners of the
mark "SkyWorld,", who used the term in their corporate and domain names. Skyworld
Holdings alleged trademark infringement and passing off against Skyworld Development,
claiming that the use of "Skyworld" in their names and domain names resembled their
registered trademark. Ultimately, the Federal Court held that the necessary elements for
trademark infringement or passing off were not established in this case, as there was no
likelihood of confusion or deception

4
Trade Marks Act 2019 (Malaysia) s 54
5
Skyworld Holdings Sdn Bhd & Ors v Skyworld Development Sdn Bhd & Anor [2011] MYHC 107 (High
Court of Malaya, 16 April 2023)
Administration mechanism:
Uniform Domain Name Dispute Resolution Policy (UDRP)

This is an international mechanism provided by Internet Corporation for Assigned Names and
Numbers (ICANN), for resolving domain name disputes. The UDRP establishes the rules and
procedures to be adhered to if a dispute arises between the domain name registrant and any
third party. A very recent case Junzhi Wang & anor v T.C. Pharmaceutical Industries Co
Ltd (20246), the court held that it has no jurisdiction to review or set aside a decision from
the UDRP. “TCP” A Thai company produced “Red Bull” energy drinks, a joint venture in
China (RBVD) was sold in China, Junzhi Wang obtained domain names such as such as
<redbullchina.com>, <redbullchina.cc>, <redbullbeijing.com> through Webnic. TCP filled
a UDRP against Wang. The question was why a dispute between Thailand & Malaysia was
presided in Malaysia. It was due to an exclusion clause ;

In short, The Trade Marks Act 2019 modernizes Malaysia's trademark laws, including
domain name provisions, and Section 54 addresses unauthorized use of registered trademarks
in domain names causing confusion. The UDRP offers an international mechanism for
resolving domain name disputes, as exemplified by the Junzhi Wang v. T.C. Pharmaceutical
Industries case, where the court upheld the UDRP's authority.

6
Junzhi Wang & Anor v. TC Pharmaceutical Industries Co Ltd [2024] 1 MLRH