The MYNIC Domain Name Dispute Resolution Policy (MYDRP) was launched on 17 April 2003 by the Regional Centre for Arbitration Kuala Lumpur (RCAKL) and Malaysian Network Information Centre (MYNIC), the sole administrator for web addresses that end with ‘.my’ in Malaysia.
MYDRP sets out the terms which govern disputes in relation to ‘.my’ and ‘.com.my’ country code top-level domains. It is modeled closely after the global Uniform Domain Name Dispute Resolution Policy (UDRP) with minor differences.
MYDRP vs UDRP: Main differences
The UDRP provides that a Complainant is required to fulfill a three-fold test (Policy 4(a)) in order to seek relief. MYDRP however provides that the Complainant is required to establish the following two elements (Policy 5.2):
- that the domain name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights; and
- that the domain name has been registered and/or used in bad faith.
Evidence of registration and/or use of the domain name in bad faith may include, amongst others, the following circumstances:
- the domain name was registered 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;
- the domain name was registered 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;
- the domain name was registered and/or is being used to disrupt the business of the Complainant; or
- the domain name was registered for purposes of and with the intention to attract or divert, for commercial gain, internet users to the registrant’s web site, a web site of the Complainant’s competitor; or any other web site and/or online location by creating a possibility of confusion or deception that the web site and/or online location is operated or authorised by, or otherwise connected with the Complainant and/or its trade mark or service mark.
Under the UDRP, the Complainant is required to show that the Respondent has no rights or legitimate interest in respect of the domain name. However, the MYDRP provides that it is the responsibility of the the domain name registrant to prove that he/she has the rights and a legitimate interest in the domain name.
The Respondent may do so by showing, amongst others things, the following:
- before the date of being informed of the Complainant’s dispute, the Respondent had used 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;
- the Respondent is commonly known by the domain name even though no trade mark or service mark had been obtained; or
- the Respondent is using the domain name for legitimate, non-commercial and/or fair purposes and has no intention of using the same for profits or to deceive the public.
Fees & availability of court proceedings
In most cases, the Complainant has to bear all fees associated with the proceedings. If the Complainant elects a one-member panel and the Respondent requests for a three-member panel, the Complainant and Respondent will split the fees evenly.
However if the Complainant elects a three-member panel on its own initiative, then the Complainant shall bear the full cost of the proceeding.
If a party loses a MYDRP proceeding, it is not prevented from having the domain name dispute resolved by a Malaysian court or any other alternative dispute resolution process. However, such further action must be commenced within ten working days from the date MYNIC is informed of the decision of the proceeding to prevent the domain name from being cancelled or transferred.
Decisions under MYDRP
RCAKL delivered its first decision under the MYDRP on 20 August 2003 in the case of Volkswagen Group Singapore Pte Ltd v Webmotion Design [RCA/DNDR/2003/01(INT)]. The domain name in dispute was ‘volkswagen.com.my’. The complaint was based on the trademark ‘VOLKSWAGEN’ registered to and owned by the Complainant in Malaysia.
On the issue of confusing similarity under Policy 5(2)(i) of the MYDRP, the panel found that the distinguishing and relevant part of the domain name was the term ‘Volkswagen’, which was virtually identical and confusingly similar to the Complainant’s trademark ‘VOLKSWAGEN’. The Complainant had also established without doubt that it had statutory rights to the trademark ‘VOLKSWAGEN’ in Malaysia.
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 authorized to use the Complainant’s mark.
The panel concluded that on the balance of probabilities, the domain name was chosen by the Respondent for its fame and that the well-known mark had been registered to be used by the Respondent for pure commercial gain.
Another notable case includes Nikon (Malaysia) Sdn Bhd v First Web Enterprise (RCA/DNDR/2008/14) where the domain name in dispute was ‘nikon.my’. In this case, the Complainant had managed to establish that the domain name was registered in bad faith but failed to establish the first limb of the two-fold test required under Policy 5.2 of MYDRP.
It was found that the Complainant had failed to show that it had any rights to the ‘Nikon’ trademark, as the registration certificate showed that the owner of that trademark was Nippon Kogaku KK, and not the Complainant, who was also unable to show any connection with Nippon Kogaku KK or any licence or authorization to use the trademark. The Respondent was allowed to keep the domain name.
In order to succeed in a domain name dispute, the Complainant has to establish rights to a trademark or service mark that the domain name is alleged to be identical or confusingly similar to and that the Respondent had registered and/or used the disputed domain name in bad faith. As can be seen from the Nikon dispute, failure to do so proved fatal to the Complainant’s case.