Generic Top Level Domain Name (gTLD) Decisions

GENTING BERHAD
COMPLAINANT,

vs.

Tan Kim Sin
RESPONDENT.

DECISION
File Number: FA0005000094735

DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION

            Domain Name(s): “GENTING.COM”

            Domain Name Registrar: Network Solutions, Inc.

            Date of domain name registration:   09/24/98  

            Date Complaint was sent to Respondent in accordance with Rule 2(a)^{[1]:   05/22/00} 

            Response Due Date:   06/12/00 

Response Date:    06/6/00  

PROCEDURAL FINDINGS

On May 22, 2000, the Complainant, Genting Berhad, filed its complaint with the National Arbitration Forum (“The Forum”) pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”).  After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent, Tan Kim Sin, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Network Solutions, ICANN and the Complainant that the administrative proceeding had commenced. 

            The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name.  By registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain names through ICANN’s Uniform Domain Name Dispute Resolution Policy.

            The Complaint is based on the trademark “GENTING” registered and/or pending application in various classes in Malasia, Singapore, Brunei Darussalam and Hong Kong.

            The Complainant requests that the domain name “GENTING.COM” be transferred from the Respondent to the Complainant.

            The Respondent contends that he has legitimate interests in the domain name, that the domain name was not registered and is not being used in bad faith, and that the Complainant does not have exclusive right to the name “GENTING”. 

            The above-captioned matter came on for an administrative hearing on June 28, 2000, before the The Hon. Harold Kalina (Ret.), John A. Bender, and The Hon. Charles K. McCotter, Jr. (Ret.) Arbitrators.  This matter is submitted for decision in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and Rules (the “Rules”).  Upon the written submitted record, and the following findings and conclusions, we find for the Respondent.

FINDINGS OF FACT

            1. Network Solutions confirmed that the Respondent is the registrant for the domain name “GENTING.COM”.

            2.   The Complainant, Genting Berhad, was incorporated on July 30, 1968, in Malaysia and is one of the top ten public limited companies listed on the Kuala Lumpur Stock Exchange, Malaysia.  The Complainant has been using the trademark since 1968 and the trademark is registered in various classes in Malaysia, Singapore, Brunei Darussalam and Hong Kong.

            3.  In May, 1998, the Respondent decided to venture into a diving center business providing diving courses, leisure dives and diving equipment in Johor Bahru and Tioman Island.  In September, 1998, the Respondent decided to base his dive center at one of Tioman Island villages known as Kampung Genting (Genting Village).  His marketing strategy included web site publishing and he secured the domain name “GENTING.COM”.  He registered his business with the Registrar of Business, Ministry of Domestic Trade and Consumer Affairs (Johor Bahru) under the name of “Genting Dive Discoveries” on May 11, 1999.  Initial marketing efforts were not encouraging and the Respondent is realigning his business plan.  The opening of the dive center operation is projected for the last quarter of 2000, provided he obtains operating funds.

            4.  The Respondent challenges the Complainant’s exclusive right to the Name “GENTING”, contending that the name is a popular local name widely used in Malaysia, including use by over 200 businesses.  However, we conclude that the subject domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

            5.  The Respondent has legitimate interests in respect to the domain name.  Prior to any notice of the dispute, the Respondent had been preparing to use the domain name in connection with a bona fide offering of goods or services.

            6.  The Complainant has failed to show that the Respondent registered or used the domain name in bad faith.  There is no evidence (1) that the Respondent registered the domain name primarily for the purpose of transferring the domain name to the Complainant or a competitor of the Complainant for consideration in excess of out-of-pocket expenses directly related to the domain name; (2) that the Respondent has engaged in a pattern of registering domain names for the purpose of preventing owners of trademarks from reflecting the mark in a corresponding domain name; (3) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (4) that the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood  of confusion with the Complainant’s mark as to the source , sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

            The domain name corresponds to the locality where the Respondent planned to locate the dive center.  The nature of the Respondent’s business is not similar to that of the Complainant.  Although the Complainant is a major corporation with a multi-facet business including recreation and resorts, the Complainant has presented no evidence that it operates a dive center.

CONCLUSIONS

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the

following:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3. the domain name has been registered and is being used in bad faith.           

The Complainant has failed to show the second and third of these elements.

DECISION

            We certify that we have acted independently and have no known conflict of interest to serve as Arbitrators in this proceeding.  Having been duly selected and being impartial, We enter the following decision:

            Based upon the above findings and conclusions, we find in favor of the Respondent.  Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Denied.  The Respondent shall not be required to cancel or to transfer to the Complainant the domain name “GENTING.COM.”

            This 28^th  day of June, 2000.

                                                            The Hon. Harold Kalina (Ret.), Arbitrator

                                                            John A. Bender, Arbitrator

                                                            The Hon. Charles K. McCotter, Jr. (Ret.), Arbitrator

                                                            By:                                                                                                                                                                   Charles K. McCotter, Jr., Panel Chair