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TRANSPLACE, never DISPLACED

09

SEP

2019

In the digital age that we live in, domain names are considered an important part of brand building, and securing the right domain name is viewed as importantly as the protection of one’s trademark. Though domain names are often one of the first impressions of a brand to consumers online, it is not protected under trademark law. Thus, the onus lies on the business owners to strategically secure the registration of their domain name before it is nabbed by any other third party.

In Malaysia, domain name registrations are governed by the Malaysian Network Information Centre (MYNIC). Dispute resolution is administered in accordance to the Domain Name Dispute Resolution Policy (DNDRP), the Rules of DNDRP and the Supplemental Rules whereas the proceeding is managed by the Asian International Arbitration Centre (AIAC), previously the Kuala Lumpur Regional Centre of Arbitration (KLRCA). To maintain the independence of dispute resolutions, MYNIC does not participate in the proceedings.

One example of a rather clear-cut domain name dispute can be witnessed in a Malaysian case where the Complainant, who owned the domain name, “transplace.com” contended that the registration of the domain name “transplace.com.my” (the “Disputed Domain Name”) by the Respondent in Malaysia must be transferred to the Complainant.

The Complainant, Transplace Texas LP, is a well-known logistics company in the US that offers logistics technology and transportation management services worldwide. The Respondent, Transplace Logistic Sdn Bhd, on the other hand, is a Malaysian company incorporated in 2009 that provides trucks and warehouses for storage purposes.

The Complainant asserted that the Disputed Domain Name was identical or substantially similar to their registered domain name as well as their registered trademark, “TRANSPLACE”, and that the Respondent had registered and used the Disputed Domain Name in bad faith. The Complainant also pointed out that they had registered their domain name in 2001 and has since offered services worldwide (including Malaysia).

In reply, the Respondent stated that the prefix “TRANS” denotes across or beyond, and the word “PLACE” refers to a geographical area with a boundary or a portion of space. The Respondent added that the combination of these words can be associated with various meanings and/or definitions and that the Complainant had not acquired distinctiveness. They also added that the domain names are not identical and distinguishable from each other and the layout of both websites are dissimilar. The Respondent also said that the goods and services offered, the trade channels, advertisement and targeted classes or prospective purchasers were different.

The AIAC heard the case through a single member Panel. The Panel dealt with the requirements as laid in the DNDRP that required the Complainant to prove that:

  1. The disputed domain name is identical or confusingly similar to the Complainant’s; and
  2. The Respondent registered and/or used the disputed domain name in bad faith.

IDENTICAL OR CONFUSINGLY SIMILAR?

The Panel was satisfied with the evidence adduced by the Complainant, in proving that the Complainant had registered its domain name in 2000. The Complainant also produced evidence to prove that their website on “transplace.com” was accessible to the public at least 8 years prior to the registration of the Disputed Domain Name by the Respondent.

The Panel clarified that even though the suffix “.com.my” is slightly different, it should be disregarded in determining if the Disputed Domain Name was in fact identical or confusingly similar, as the suffix is merely a technical requirement for registration. The Panel also added that although the word “TRANSPLACE” is neither an invented word nor a dictionary word, it is considered to be a suggestive word, which could achieve distinctiveness through excessive use.

The Panel then highlighted that the Respondent failed to provide any valid justification for the choice of the word used for the domain name. The Panel added that in determining whether the Disputed Domain Name is identical to or confusingly similar to the Complainant’s mark, it has to be established that the essential elements of the mark has been adopted or incorporated into the Disputed Domain Name.

IN BAD FAITH…

The Complainant stated that the Respondent’s choice of words for the domain name cannot be incidental as the Complainant is a globally known and well-recognized company in the transportation and logistics industry and that the Respondent should be aware of the Complainant’s ownership and the usage of the term.

However, the Rules and Policy of the DNDRP allow the Respondent to rebut the allegations made by the Complainant. To do so, there were several evidences that needed to be adduced by the Respondent which include:

  1. The Respondent had genuinely used or made preparations to use the Disputed Domain Name even before the filing of the complaint;
  2. The Respondent is commonly known by the Disputed Domain Name; or
  3. The use of the Disputed Domain Name is for legitimate, non-commercial and/or fair purposes and have no intention of using the same for profits or to deceive the public.

The Respondent contested that it is a legitimate business operation and it cannot be bad faith when there is an existing business and assets comprising 40 trucks and 3 warehouses worth RM5 million in value. However, the Complainant rebutted this by stating that there was no substantive proof of such assets and it was questionable if these assets were related to the use of the Disputed Domain Name.

In response, the Respondent argued that their website was clearly distinguishable from that of the Complainant’s and submitted printouts for the Panel to view and judge. However, the Panel noticed close similarities between the marks on the websites in terms of design, stylisation, fonts and format.

Following that, the Respondent failed to refute the allegations made by the Complainant. The Panel believed that the Respondent was aware of the existence of the Complainant, and therefore used or registered the Disputed Domain Name in bad faith. The Panel then came to a verdict that the Disputed Domain Name was to be transferred to the Complainant.

Based on the above case, it is clear that besides trademark registration, it is important for a business owner to also register their domain names. Therefore, it is advisable to start registering top level domain names (.com.my; .net and etc.) simultaneously with other Intellectual Property rights that you wish to protect when building your brand and business.

Alisa Rajamalar is a Trademarks & Designs Executive at KASS International, the Malaysian branch office of KASS International, an established intellectual property firm with offices in Malaysia, Singapore, Indonesia and Myanmar. For more information, please visit www.kass.asia or drop an e-mail to kass@kass.asia.

About the Firm

KASS International Sdn. Bhd.
Address Suite 8-13A-2, Menara Mutiara Bangsar, Jalan Liku, Off Jalan Riong, Bangsar, 59100 Kuala Lumpur, Malaysia
Tel 60-3-2284 7872
Fax 60-3-2284 1125
Email hello@kass.asia
Link www.kass.asia

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