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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skrine v. Skrine & Ors
Case No. D2000-1105
1. The Parties
Skrine, Unit No.50-8-1, 8th Floor, Wisma UOA Damansara, 50 Jalan Dungun, Damansara Heights, 50490 Kuala Lumpur, Malaysia (Complainant).
(i) Skrine Low Chit Sin, Xiakeng Amind Area Cheng Peng, Dong Guan City China (ii) My Information Centre Sdn Bhd, 519, Block A, 5th Floor, Kelana Business Centre, 97 Jalan SS 7/2, Kelana Jaya, 47301 Petaling Jaya, Selangor, Malaysia (iii) Hui Siew Choong, 6 Jalan Akasia 3B, Saujana Akasia, 47000 Sungai Buloh, Selangor, Malaysia (Respondents).
2. The Domain Name and Registrar
The Respondent is the registrant of the following domain name: "skrine.com" Registrars.com, 475 Sansome St.#1730, San Francisco, CA
USA 94111
3. Procedural History
The Complaint in this case was filed by e-mail on August 22, 2000, and in hardcopy on August 25, 2000, with the WIPO Arbitration and Mediation Center.
The Center has found that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
On August 25, 2000, the Center transmitted a request to Registrars.com, 475 Sansome St.#1730, San Francisco, CA, USA 94111 to verify the following facts:
On September 19, 2000, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. This was done by e-mail. The Administrative Panel finds that the WIPO Center has satisfied its notification obligations under Rule 2(b).
The Center on October 9, 2000, received response from the Respondent.
On October 10, 2000, the Center sent an acknowledgment of receipt of response.
On November 5, 2000, the Center appointed an Administrative Panel consisting of a single member viz., Maninder Singh and this was notified to the Complainant and the Respondent.
The language of the administrative proceedings is English.
4. Factual Background
The Complainant in this administrative proceeding is Skrine, Unit No.50-8-1, 8th Floor, Wisma UOA Damansara, 50 Jalan Dungun, Damansara Heights, 50490 Kuala Lumpur, Malaysia. It is a firm of advocate and solicitors in Malaysia. It was founded on January 5, 1963 and takes its name from Mr. John Skrine, one of the founding partners. The Complainant contends that it is one of the largest law firms in Malaysia having achieved extensive exposure throughout Malaysia and abroad. It enjoys a reputation as one of the leading law firms in Malaysia.
The dispute arises out of the grievance of the complainant that the name "Skrine" for which the Complainant is known has been registered as a domain name, viz., "skrine.com" by the Respondent to which the respondent is not entitled.
5. Parties Contentions
The Complainant's contentions in brief are as under:
The Complainant contends in the complaint that it is a firm of Advocates and Solicitors in Malaysia, was founded on May 1, 1963 and takes its name from Mr John Skrine, one of the founding partners. The name "Skrine" itself is uncommon. There is no other firm, company or business anywhere in Malaysia named "Skrine" or which incorporates the word "Skrine" in its name.
It claims to be one of the largest law firms in Malaysia and has achieved extensive exposure throughout Malaysia and abroad as a result of its long establishment and broad client base, which includes individuals, other law firms and professional bodies, traders, companies, non-profit organisations, statutory bodies, multinational companies and many others; whether Malaysian or foreign.
The Complainant has also achieved public exposure through the many landmark and significant cases it has handled since its inception; cases which have been reported or attracted press attention. The name appears either as the solicitor firm or representative counsel on record or a party to the proceedings .
The Complainant enjoys a reputation as one of the leading law firms in Malaysia and has been mentioned in the guidebooks AsiaLaw Profiles 2000, The Asia Pacific Legal 500 and The International Financial Law Review 1000. The Complainant is also listed in various directories, such as Malaysian Legal Directory, Martindale-Hubbell International Law Directory and International Directory of IP Law Firms. In addition, the Complainant is a member of the Pacific Rim Advisory Council and Lex Mundi, two leading international associations of law firms.
It is also the case of the Complainant that since its foundation in the year 1963, the Complainant had continuously and consistently conducted its business under the name of "Skrine & Co". The name "Skrine & Co" appeared on the Complainant’s documents, letterheads, and business cards. The Complainant was and is often referred to simply as "Skrine" since the suffix "& Co" is a generic term. As such the operative and distinctive part of the Complainant’s name is "Skrine". The Complainant has since January 1, 2000, changed its name to "Skrine" and has since that date conducted its business using this name only.
As a consequence of its long and extensive use, as described in the paragraphs above, the Complainant has acquired substantial reputation and goodwill in the name "Skrine". It further submits that due to the rarity of the name "Skrine" and the established reputation and goodwill of the Complainant, the name "Skrine" is distinctive of and associated exclusively with the Complainant and none other.
The Complainant in the Complaint claims that the domain name "skrine.com" incorporates the use of the words and/or the name "skrine" and is therefore identical or confusingly similar to the Complainant’s trade name or service mark in which the Complainant has rights.
It has been further contended by the Complainant that the First Respondent’s supposed name is "Skrine Low Chit Sin". It contends that the First Respondent does not exist and is merely a fictitious character made up by the Second Respondent through their officers, agents and/or servants and/or the Third Respondent in order to frustrate the Complainant’s attempts to register the domain name "skrine.com". It has also been submitted by the Complainant that this fact is clearly established because the domain name has never been used by the Respondents. The Complainant also disputes/denies any alleged right of the Second and Third Respondent in the domain name in question. In support of its contentions that the respondents had wrongfully and with the intent and sole or predominant purpose to injure and cause damage to the Complainant by conspiring, the Complainant had invited the attention to the following facts :
● On or about April 1, 1999, the Second Respondent registered or caused the registration of the domain name "skrine.com" without the licence, consent or authority of the Complainant.
● The Complainant had on April 15, 1999, demanded for the transfer of the domain name "skrine.com" from the Second Respondent and its director, Woo Wai Heng. In reply thereto, the Second Respondent wrote to the Complainant offering its services in inter alia renting server space, designing homepages and setting up e-mail accounts at a specified price or to transfer the domain name "skrine.com" to the Complainant for a one time payment of RM1,000.00. A series of correspondences were then exchanged between both parties but to no avail.
● The Complainant thereafter filed a Writ of Summons (Suit No. D1-22-3328-99) ("Writ of Summons") in the High Court of Malaya against the Second Respondent and Woo Wai Heng on December 30, 1999, to inter alia restrain the use of the domain name "skrine.com" by the Second Respondent and Woo Wai Heng and to cause a transfer of the domain name to the Complainant. A copy of the unsealed Writ of Summons was served on the Second Respondent’s solicitors, Messrs Lee Ong & Kandiah, on the same day.
● Subsequently the Complainant served on Messrs Lee Ong & Kandiah a copy of the sealed Writ of Summons on January 20, 2000. However, despite several attempts by the Complainant, service of copies of the unsealed and sealed Writ of Summons could not be effected on Woo Wai Heng.
● On or about February 14, 2000, the Complainant discovered that the domain name "skrine.com" had been re-registered with Internet Domain Registrars on January 17, 2000, to a person named Skrine Low Chit Sin, the First Respondent herein, who apparently resides at Xiakeng Amind Area Cheng Peng, Dong Guan City, China. Internet Domain Registrars or otherwise known as Registrars.com, is an ICANN-accredited registrar and expressly incorporates the Policy into its domain name registration agreements.
The Complainant has further contended that it believes that neither the Registrant nor the Registrant’s stated address exists. The basis of this belief is that firstly, Skrine is a unique surname and would not normally be used as a first name. Secondly, a search was conducted in the "Times Atlas of the World (Comprehensive Edition)" and the Complainant could not locate a city known as Dong Guan City in China or anywhere else in the world for that matter. Thirdly, the circumstances of the case indicates a conspiracy by the Respondents to inter alia frustrate the then pending legal proceedings brought by the Complainant against the Second Respondent and Woo Wai Heng.
According to the Complainant, while re-registering the domain name in question, the Third Respondent had given false particulars to the registrar of the domain name "skrine.com". The false particulars include not only the details of the registrant as described above but also extends to the Third Respondent’s details as the administrative, technical and billing contact of the domain name "skrine.com".
The complaint further reveals the contention of the Complainant that the Third Respondent’s stated address in California, United States differs. For the administrative contact, the Third Respondent’s stated address is 1946, Barton Road, California 96152 whereas for the technical and billing contacts, the stated address is 22737, Barton Road, California 47600.
The postcode "47600" stated in the technical and billing contacts is actually the same postcode given by the Third Respondent in his previous Malaysian address. In this regard reference is made to the official company search results of BI Technology and Engineering Centre Sdn Bhd dated April 18, 2000, in Annex 4.
The phone number 6019 2286628 is in actual fact a Malaysian mobile phone number registered to BI Technology and Engineering Centre Sdn Bhd and used by the Third Respondent.
The complainant on the basis of its investigations has further contended in the complaint that :
● The Third Respondent is connected or associated with Woon Moi Yin, who is a director of the Second Respondent, by virtue of a de facto relationship. As can be seen from Annex 2, the said Woon Min Yin has the same recorded address as the Third Respondent’s previous address namely 88 USJ 6/2A, Subang Jaya, 47600 Petaling Jaya, Selangor, Malaysia;
● The Third Respondent is the registrant and the contact reference for the domain name "raredomain.org" which is registered with Network Solutions, Inc. and which uses the domain servers of the Second Respondent. A copy of the first print-out of the domain name "raredomain.org" search results dated February 14, 2000.
● The Respondents are carrying out a similar conspiracy against another well known law firm in Malaysia, namely Messrs Allen & Gledhill. In or about 1999, the Second Respondent was recorded as the registrant of the domain name "allengledhill.com". Subsequently however, it was discovered that the Third Respondent’s domain name "raredomain.org" was registered as the registrant of the domain name "allengledhill.com", the domain name of which is registered with Internet Domain Registrars and uses the domain servers of the First Defendant. Further it seems that now the administrative, technical and billing contacts are identical to the ones used in respect of the domain name "skrine.com". Inter alia, the Third Respondent uses the e-mail addresses "skrinelow@hotmail.com" and "sale@raredomain.org".
● The Third Respondent is the administrative and billing contact of, inter alia, the domain name "simedarby.com", registered with and in the name of the Second Respondent. In this regard, the Third Respondent uses the e-mail address "hui@malaysiainfo.com" as well as the telephone and fax numbers of the Second Respondent. It will be noted from the search results dated July 12, 2000 that the Third Respondent uses the same address as Woon Moi Yin as stated above.
● The Respondents have recently moved the domain server "skrine.com" from Internet Domain Registrars’ domain servers to the Second Respondent’s servers.
The Complainant further informs that in the light of the circumstances the Complainant chose to put a hold on the Writ of Summons filed against the First Respondent and Woo Wai Heng and to proceed herein to ensure that the Complainant’s attempts to preserve its rights are not frustrated by the acts of the Respondents. As at the date of filing this Complaint, neither the First Respondent nor Woo Wai Heng had entered an appearance to the Writ of Summons.
The Complainant thus contends that the actions and conduct of the Respondents are calculated to deceive and mislead or are likely to deceive and mislead the trade and public into a belief that the domain name "skrine.com" registered by the Respondents acting in conspiracy with one another is that of the Complainant’s or is otherwise howsoever associated, affiliated or connected with the Complainant.
The Complainant submits that the actions and conduct of the Respondents have deprived the Complainant of the right and opportunity to have a domain name comprising its own name. This amounts to a loss of competitive advantage and loss of identity in the information superhighway. If the Respondents are allowed to activate, use or deal with the domain name "skrine.com" this would result in a false association of the domain name "skrine.com" with the Complainant and would cause confusion among the trade and public and cause the Complainant’s name to lose its distinctiveness and hence devalue/dilute the Complainant’s goodwill and reputation therein.
The Respondents’ act of registering or causing the registration of a domain name incorporating the name or trade mark of another entity is not without precedent. The Respondents demonstrate a propensity for domain name hijacking or cybersquatting because apart from "skrine.com" the Respondents had also registered inter alia the following well-known names in Malaysia, some of which include well known law firms, first board public listed companies, stock exchanges, government bodies and organizations:
"allengledhill.com"
"karpalsingh.com"
"rashidlee.com"
"esquirekitchen.com"
"arab-malaysian.com"
"perodua.com"
"simedarby.com"
"renong.com"
"risda.com"
"felda.com"
"tabunghaji.com"
"umno.com"
"zaitun.com"
"mrcb.com"
"bernas.com"
"mulpha.com"
"tanchong.com"
"evermaster.com"
"klse.org"
Respondent’s Contentions:
In its response, the respondent has contended that MY Info was set up in August 1998, with its objective of helping individuals and businesses establish a presence in the Internet. They first started as a provider of top-level domain name registration, web designing and hosting services but have now advanced to become a total solutions provided.
It further submits that MY Info is the first partner of Network Solutions Inc., USA, (Netsol), the registry and the dominant registrar of top level domain names ending in ".com", ".net" and ".org" in Malaysia. As a web-designer, hosting and provider of domain name registration services during MY Info’s humble beginning, they started promoting the registration and popularising of ".com" domain names. This can be seen when they became a partner of Netsol, a lot of their customers congratulated them through the local news media. The respondent claims that a lot of money was also spent in their efforts to promote domain name registrations in the country.
It further contends that in continuing their effort to promote the top level domain names, they even held the first Asia Pacific Partnership Meeting in Kuching, Malaysia. Again, their customers published welcoming massages in the local newspapers to the delegates to this meeting.
It is also one of the submissions of the Respondents in their response that due to the good response in the registration of names, they have also appointed resellers in the country to service the customers especially web-designing and hosting following registration of domain names.
In domain name registration with Netsol, their earlier template which was used to register domain names by their customers was such that if no valid e-mail was provided/filled up, My Info would be registered as the registrant and contact. In fact, even up to this present day, they have a lot of customers whose domain names are still registered under MY Info.
The Respondents further state that Skrine was until January 3, 2000, known as Skrine & Co and they have registered as their domain name "skrineco.com" which they have been using and promoting as their e-mail address. This e-mail "skrine@skrineco.com" was even used in their news media advertisement wherein they stated that they are now known as Skrine and also in their corporate profile which was provided as page 50 of Annex 6 of the Complainant’s submission of complaint to WIPO.
In its attempt to provide further justification for registering the domain name in question, the Respondents in their response further state that Mr. Skrine Low Chit Sin, 27 years of age, is a Malaysian. He resides at a small town of Seremban and is currently working in China.
Alongwith their response, the Respondents have also sought to rely upon certain events and annexures. They have, however, admitted the exchange of communications as stated in the complaint. It is admitted by them that they had written to the Complainant for payment of an amount for transfer of the domain name.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and
(2) That the Respondent has no legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.
Identical and confusing similarity:
It is clear from the record that the impugned domain name is identical to the name of the Complainant i.e. Skrine. There is no doubt that the name Skrine of the Complainant and the impugned domain name i.e. "skrine.com" by the Respondent is identical and confusingly similar.
Legitimate interest:
There cannot be any doubt that the Complainant has rights and legitimate interest in the name "skrine". As against this, it is an admitted position with the Respondents that when the domain name "skrine.com" was initially registered by them, they had no connection/relation of any kind whatsoever with the word "skrine". It is also an admitted position that subsequently when disputes had arisen between the Complainant and Respondents in relation to the registration of the domain name "skrine.com", the Respondents have got a re-registration done on January 17, 2000, in the name of First Respondent. The address of the First respondent of China given in the re-registration was found to be non-existent by the Complainant. The Respondent is silent in its response to the contention of the Complainant that false particulars were provided at the time of the registration of the disputed domain name in favour of the First Respondent. The only statement made in the response by the Respondents is that First Respondent is a Malaysian who is currently working in China. The further explanations sought to be given by the Respondents in their response, when there is no denial to the above-mentioned specific allegations made by the Complainant, do not inspire any credibility and merit non-acceptance. I am, therefore of the opinion that the Respondents, in these facts and circumstances of the case, do not have any right or legitimate interest in the word "skrine".
Bad faith
The Respondents have admitted in their response the allegation of the Complainant supported by the documentary evidence that they by their letter dated April 21, 1999, had demanded charges/payment for transfer of the disputed domain name. There is a complete silence in the response filed by the Respondents to a specific contention of the Complainant that the Respondents have hijacked a large number of other well known names in Malaysia including the names of well known law firms, first board public listed companies, stock exchanges, government bodies and organisations, such as,
"allengledhill.com"
"karpalsingh.com"
"rashidlee.com"
"esquirekitchen.com"
"arab-malaysian.com"
"perodua.com"
"simedarby.com"
"renong.com"
"risda.com"
"felda.com"
"tabunghaji.com"
"umno.com"
"zaitun.com"
"mrcb.com"
"bernas.com"
"mulpha.com"
"tanchong.com"
"evermaster.com"
"klse.org"
Under these circumstances, it is not required to go into further details in relation to other contentions of the Complainant in support of its case. While referring to a landmark judgement of Chancery Division of High Court of England and Wales in the case of Marks & Spencer PLC & Ors. Vs. One in a Million Limited & Ors. reported as (1999) 42 IPR 309, I hold that the registration of the domain name "skrine.com" by the respondents is in bad faith.
7. Decision
The Panel decides that the Respondents’ domain name "skrine.com" should be transferred to the Complainant.
Maninder Singh
Panelist
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URL: http://www.worldlii.org/int/other/GENDND/2000/1639.html