Cybersquatting is now a common phenomenon worldwide. Companies may find themselves caught in a battle for domain names which bear their trademarks. Domain names have become more valuable, and a market has emerged for commandeering domain names in the 'first come, first served' registration system. The reason for the proliferation of cybersquatters may be because a complainant finds it easier to purchase the registered name from the cybersquatter, rather than bringing the dispute to an approved administrative panel for settlement.
The case of Skrine v Skrine [Case D200-1105], decided by the Administrative Panel of the World Intellectual Property Organization (WIPO), is the first to deal with a disputed domain name in Malaysia. It is hoped that it will raise awareness of the recourse that is available, particularly for those trading in e-commerce.
This case involved one of Malaysia's most famous legal firms, Skrine. In late 1999 Skrine discovered that the domain name 'skrine.com' had been registered by a company named MyInformation ('MyInfo', the second respondent). Skrine demanded the transfer of the domain name, whereupon MyInfo wrote to Skrine offering either (i) its services (including renting server space, designing the web site and setting up e-mail accounts) at a specified price, or (ii) the transfer of the name for a one-off payment of 1,000 ringgit. Skrine did not reach an agreement with MyInfo.
In February 2000 Skrine discovered that the domain name had been re-registered with the internet domain registrar by an individual named Skrine Low Chit Sin (the first respondent). Several factors seemed to point to the fact that the respondents had given false information to the registrar:
- Skrine is a unique surname and would not normally be used as a first name;
- Skrine Low Chit Sin allegedly lived in Dong Guan City, China, a place which was later proved not to exist; and
- the circumstances of the case indicated a conspiracy by the respondents to frustrate the pending legal proceedings brought by Skrine.
Additionally, the respondents provided false information in relation to the technical and billing address. The telephone number provided was a Malaysian mobile telephone number registered and used by Hui Siew Choong (the third respondent).
Skrine claimed substantial reputation and goodwill in the name, and that the name was distinctive and associated exclusively with the firm.
The administrative panel held that the domain name 'skrine.com' should be transferred to the Skrine law firm. Panel decisions are based primarily on Paragraph 4(a) of the Uniform Domain Name Dispute Policy. Skrine was successful in satisfying all three of the policy elements, proving that:
- the registered domain name was identical or confusingly similar to Skrine's name;
- Skrine had rights and a legitimate interest in the name 'skrine'; and
- the registration of the domain name by the respondents was in bad faith.
This case demonstrates that it is easy for domain name registrants to provide false information, especially because the registrar does not independently verify it. The registrar could have helped to disallow the registration by requesting proof, or searching for the validity of, the address and telephone number. Additionally, the registrar could have requested proof of a valid interest in the domain name. Verification of these details may have helped prevent the respondents from hijacking the domain name (and also others, including the names of other well-known Malaysian law firms, listed companies, stock exchanges and government bodies).
However, verification may not be an entirely straightforward process. In November 2000 the Internet Corporation for Assigned Names and Numbers (ICANN) approved seven new generic top-level domains (GTLD). This brings the total of approved GTLDs to 14, and there have been requests for hundreds of new generic domains. Faced with such large numbers, the registrar would find it difficult to review the details of thousands of worldwide applications. ICANN's approval of the new GTLDs should help to eliminate complaints relating to the shortage of available domain names, but it does seem to widen the playing field for the cybersquatters.
Perhaps the more difficult question to consider is when registration will be considered to be in 'bad faith'. While Skrine proved that its name is uncommon, there are many firms with common Malaysian names (eg, Wong & Partners, Chooi & Co and Zain & Co). Although a complainant may show goodwill, reputation and legitimate interest in a name, a respondent need only prove that it has the same name, or owns a business of the same name, to dispute a charge of bad faith.
Perhaps the relaxed attitude in Malaysia to cybersquatting arises from the fact that even though a cybersquatter may have registered its trademark(s) as a domain name at the international level, the local domain name registrar Malaysian Network Information Centre will still offer a place for local applicants to register. The centre requires a declaration from domain name applicants that their intended name does not infringe existing trademark rights. However, it is not known whether the process will filter out the activities of the hijackers.
Many comments and criticisms have been made to ICANN and other related bodies regarding the problems that arise from cybersquatting and the weaknesses of the current system. The Internet has no boundaries and the implementation of rules and regulations will have to take into consideration worldwide trends. Nevertheless, it is hoped that this case may help curb the rapid increase of cybersquatting in Malaysia.
For further information on this topic please contact Hana Sakina Izham at Zaid Ibrahim & Co by telephone (+603 257 9999) or by fax (+603 254 4888) or by e-mail ([email protected]).
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