Marketers would argue that the domain name is the face of a business on the World Wide Web, and business owners themselves would most likely agree. As of 10 November 2013, there were 147,803,163 top level domain names registered. Top Level Domains are domain names which end with .COM,.NET, .ORG, .INFO, .BIZ, and .US.
Most domain names have a 63 character limit. Undeterred by this limit, there is one site that claims to have the longest domainname:http://www.llanfairpwllgwyngyllgogerychwyr ndrobwyll-llantysiliogogogoch.com/
The name belongs to a village in Wales. When you enter the website, you are immediately greeted by “Welcome to the World's Longest Single Word Domain Name!” and invited to send a friend an email from the “world’s longest domain name”. The village name was initially shorter. It was called Llanfair Pwllgwyngyll (translated to mean “St Mary's church near the pool by the white hazels”). Then due to a publicity stunt, the name of the village became “Llanfairpwllgwyngyllgogerychwyrndrobwll-Llantysiliogogo goch” (which means “St Mary's church in the hollow of the white hazel near a rapid whirlpool and the Church of St Tysilio of the red cave”).
Now you are probably wondering, if that is the longest domain name, what is the shortest? It appears that Google has the shortest domain name, that being g.cn, which was bought to make it easier for Chinese users to find its website.
Irrespective of length, as with all property rights (yes, domain names are also property rights), disputes as to the use of the domain name and similar domain names can arise.
In Malaysia, these disputes are governed by the MYDRP, the Domain Name Dispute Resolution Policy prepared by MYNIC Berhad, the registry and registrar for the .my domain.
Domain name disputes can be resolved through a Domain Name Dispute Resolution Proceeding or before a Malaysian Court and/or other dispute resolution measures (negotiations/arbitration/mediation).
Should the aggrieved party (“Complainant”) choose to resolve the dispute by way of Domain Name Dispute Resolution Proceeding, the appointed body, Regional Centre for Arbitration Kuala Lumpur (KLRCA) will manage and decide on the dispute.
To be successful, the Complainant has to prove; (1) that the disputed domain name is identical/similar to a trademark of the Complainant, and (2) that the Respondent registered and/or used the disputed domain name in "bad faith".
To date, there have been a total of 23 domain name disputes which have been brought to KLRCA. Out of them, 14 domain names were transferred to the original owners of the trademark subsisting in the domain. The success rate of the Complainants in securing a favourable decision in the Resolution Proceeding is encouraging to brand owners.
Visiting some of the disputes, especially one where the domain was transferred and one where the domain remained with the company that registered it would be enlightening to business owners, so let’s pursue that path.
Let’s go to Legoland…
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In the dispute over the domain names legoland.com.my and legoland.my, the Complainant substantiated its complaint with evidence of its fame and its registration of variations of its LEGO mark worldwide. The Complainant showed that it was the owner of more than 100 domain names containing the term “LEGO LAND” and among them were the local ones, legolandmalaysia.com.my and legolandmalaysia.my.
The domain names in dispute were registered by the Respondent on 5 December 2008, which happens to be in the same month in which news that the LEGOLAND theme park would be built in Malaysia was released to the public.
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Multicoloured Lego bricks and figures - loved by children and toy enthusiasts from all over the world.
Attempts to solve this matter through a Cease and Desist letter failed. The Respondent asked for USD 2,000 for the transfer of the domain names. The Complainant explained that they could only reimburse the Respondent for the registration fees incurred (i.e., actual cost incurred) but offered USD 500 to settle amicably. When the offer was not taken, the Complainant commenced the complaint through the Domain Name Dispute Resolution.
Facts were in favour of the Complainant as not only could the Complainant prove that it owned the registered trademark to LEGOLAND but it also had legitimate rights to the mark and domain name. That the Respondent was acting in bad faith was also easily established due to the timing in which the domain names were registered, the offer to sell the domain names for a figure exceeding its out of pocket expenses, and the domain names not being used in connection with bona fide offering of goods and services.
The Complainant succeeded and the domain names in dispute were transferred to the Complainant.
Who got the “best offer”?
On the other hand, success was not with the Complainant in the dispute over the bestoffer.my domain. In Cobweb Sdn.
Bhd. V Infotouch Solution Provider, both parties are based in Johor, Malaysia and ironically, are both involved in the IT business.
The Complainant, who owns the bestoffer.com.my domain name, operated a business dealing in websites, including domain name registration, web design, and webhosting in Malaysia whereas the Respondent is in the business of internet services, website services, software development and providing mobile content.
Although the Complainant claims that it has been using its domain name extensively since 2002, it appears that the domain name was only registered on 20 April 2009. The Complainant had evidence that it has used the phrase “bestoffer” since 2003, but had no evidence to prove that it had registered the trademark or applied for the trademark. Based on evidence and the judgment, the Complainant appeared to have common law rights to the mark “bestoffer”.
The domain name in dispute, bestoffer.my, was registered on 2 April 2008 by the Respondent.
Now, evidence of bad faith may include circumstances where the Respondent had registered and is using the domain name with the intention of attracting or diverting, for commercial gain, internet users to the Respondent’s website by creating a possibility of confusion or deception that the website is operated or authorised by, or otherwise connected with the Complainant and/or its trademark.
Unfortunately, bad faith was not proven in this case and the complaint was denied. This means that the domain names bestoffer.my and bestoffer.com.my belong to two different companies.
What stood out in this case was that there may be an actual dispute that needs to be solved in Court as both parties are in the IT business and both have websites with identical domain names. It was stated in the judgment that documents submitted by the Complainant seem to indicate issues of passing off and infringement but in the end, the Panelist concluded that “If indeed such is the dispute, neither this forum nor the Dispute Resolution Policy is appropriate to resolve it.”
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The rule of thumb is therefore to seek proper, comprehensive advice from an Intellectual Property consultant who can advise you on the chances of success in a domain name dispute and advise you on the right forum to initiate the action. As to choosing the domain name for your business, long or short, quirky or boring… well, we’ll leave that bit to you!!!