Ideas Path

PETALING JAYA: Today’s domain names have become important identifiers for businesses, joining other identifiers protected by intellectual property rights such as trademarks.

The complexities of trademark law, however, can make it difficult for businesses to determine if they have enough protection for their domain name assets.

For example, trademark laws do not protect domain names that contain broad terms describing products or services (e.g. computers.com.my), so a business that uses that domain would have to rely on more proactive steps.

The onus is on the business owner to strategically register the domain name assets before the “next guy” to protect his online intellectual property, both current and future.

While prevention is always better than cure, it’s also good to know one’s recourse should a domain name dispute arise.

Slugging it out

In Malaysia, all domain name disputes are governed and administered in accordance with .my DOMAIN REGISTRY’s Domain Name Dispute Resolution Policy (MYDRP) — an administrative process designed to provide a fast and affordable resolution to local domain name disputes.

To remain impartial, .my DOMAIN REGISTRY as the sole administrator for domain names in Malaysia does not participate in the process, other than to enforce the decisions in accordance with the MYDRP.

The independent provider responsible for presiding over dispute resolutions here involving .my country code top-level domains (ccTLDs) — which includes .my, .com.my, .org.my, .net.my, etc — is called the Kuala Lumpur Regional Centre for Arbitration (KLRCA).

To date, there have been 19 cases and 14 decisions made in Malaysia related to domain name disputes involving both local and multinational entities.

The expectation is that this number will rise in reflection of the increasingly important role Internet identities play in the professional and personal lives of Malaysians.

For names registered under the generic top-level domains (gTLDs) of .com, .org, .net, etc, complaints can be filed under the Uniform Dispute Resolution Policy (UDRP) — which the MYDRP is modelled on — through either the World Intellectual Property Organisation (WIPO) or the Asian Domain Name Dispute Resolution Centre (ADNDRC).

The final step

Domain name dispute resolution proceedings are typically seen as the last resort. Complainant and respondent are encouraged to explore negotiations, mediation, or conciliation before commencing a proceeding.

If the parties fail to find resolution through a KLRCA proceeding or do not want to resolve the dispute that way, the domain name dispute can also be resolved before a Malaysian court, arbitration or through any other dispute resolution process, regardless of whether the KLRCA proceeding has commenced or concluded.

An example would be conflicting Intellectual Property rights over trademarks, i.e. when there are two identical applications for the same trademark.

To be fair and neutral, the first-come, first-serve principle applies when it comes to the registration of domain names. No priority is given to trademark owners and all Malaysian companies and individuals alike are given equal access to any domain name as long it’s available.

Around the world and in Malaysia, most domain name disputes are due to cybersquatting, a practice where third parties register trademarks, names of famous people, or businesses with which they usually have no connection as domain names.

Usually, cybersquatters will register several variations of these names and then sell them back to the company or person involved, or auction them for prices sometimes way above the registration cost. More unscrupulous cybersquatters use these domain names to attract business to their own sites.

In a dispute, the complainant usually bears the costs of the hearing fees, except where the complainant originally chooses a single-member panel but the respondent chooses a three-member panel instead (the fees are then split equally).

The hearing fees for a single-member KLRCA panel starts from RM2,500 and the hearing fees for a three-member panel is RM5,000.

Step by step

A domain name dispute is usually resolved this way: The complainant must successfully prove that the disputed domain name is (1) identical or similar to a trade or service mark of the complainant, and (2) that the respondent registered and/or used the disputed domain name in “bad faith,” or with the intent of selling the domain name for a profit to the complainant, or registration or use of the domain name to disrupt a competitor’s business.

Only then will the registration of the disputed domain name be transferred to the complainant or deleted.

The respondent in turn, may defend their use of the domain name by establishing rights and legitimate interests in the domain name by the fact that the respondent has been known by a name identical or similar to the domain name prior to registering it.

There are no monetary damages applied in MYDRP domain name disputes, and no injunctive relief is available. .my DOMAIN REGISTRY, as the accredited domain name registrar, will implement the panel’s decision after 10 working days, unless the decision is appealed in court in that time.

For more information, including decisions and case files, visit www.rcakl.org.my. (The writer is senior policy executive at .myDOMAIN Registry.)