30 October, 2015
BTC InternatIonal LimIted [Complainant] Vs NXC CorporatIon [Respondent]
Panel
SINGLE-MEMBER PANEL MS. SAMRITH KAUR
Case no.
KLRCA/ DNDR-266-2014
Decision Date
5 DECEMBER 2014
Facts
A dispute arose between BTC International Limited, a company incorporated in the British Virgin Islands and NXC Corporation incorporated in Korea in relation to the Domain Name britishindia.com. The disputed Domain Name was registered with Gabia, Inc. The Complainant filed its case with the Kuala Lumpur office of the Asian Domain Name Dispute Resolution Centre pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP). The Complainant contended that the disputed Domain Name is identical and/or confusing similar to a trade mark in which the Complainant has a right. The search on the WHOIS database list showed that the Respondent is the registrant of the disputed Domain Name. This could cause the general public to be confused that the Respondent is the owner of the British India (BI) Mark or associated with the Complainant or authorised by the Complainant to use the BI Marks.
Further, the Complainant stated that the Respondent had no rights or legitimate interest in the Domain Name as no permission has been granted to the Respondent to use the BI Marks or the disputed Domain Name. The Complainant stated that the Respondent is not commonly know by the disputed Domain Name and is not making legitimate non- commercial or fair use of the disputed Domain Name. The Complainant also contended that the Domain Name was registered and is being used in bad faith. The Complainant claimed that the Domain Name was registered by the Respondent primarily for the purpose of selling, renting or otherwise as the Respondent offered to licence the Domain Name to the Complainant for a 3-year period for a fee of $3,000.00 per annum and the mere holding and not using of the disputed Domain Name is enough to show that the Domain Name was being used in bad faith.
Therefore, the Respondent’s use of the Domain Name in relation to the Respondent’s business is likely to cause confusion and/or deceive, and that the trade and public would erroneously suppose or mistake the business of the Respondent to be associated with that of the Complainant.
The Complainant requested the panel to transfer the Domain Name to the Complainant. The Respondent in turn contended that the Respondent is not only registering and using a number of Domain Names in connection with its current business, but also securing in advance the Domain Names that it might use for various future businesses by registering and holding them.
At the time of the registration of the subject Domain Name, the Respondent contended that it was never aware of the existence of the Complainant’s BRITISHINDIA related trademarks because the trade name was not registered in Korea (where the Respondent had its business). The Respondent also submitted that “BRITISHINDIA” literally refers to “British India” and does not constitute a coined word Marks. Therefore, a coined incidence of the identicalness/ similarity to the BI Marks was not enough to be a presumptive ground for the Respondent’s bad faith intent.
The Respondent, in addition, argued that it was unfair to deem that by virtue that the Respondent had proposed to the Complainant the payment of royalties for the use of the Domain Name, to which the Respondent has lawfully owned property right over for 15 years since its registration, indicated that the Respondent was using the Domain Name in bad faith.
Issues
The issue was whether the Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights to; whether the Respondent had no rights or legitimate interests in respect of the domain name; whether the Respondent’s name had been registered or used in bad faith.
HELD
The panel found that the Complainant had established that it is the owner of the trademarks compromising “BRITISHINDIA”. The Complainant registered the trademark BI in 1994 prior to the Respondent registering the disputed Domain Name (britishindia.com). Based on the BI Mark being the Complainant’s registered trademark, and that the Complainant is only known by the disputed Domain Name, the panel found that the disputed Domain Name was identical or confusingly similar to the Complainant’s registered trademark. Further, the Complainant asserted that it had not granted any permission to the Respondent to use the BI marks or disputed Domain Name. The panel noted that there was nothing to indicate or suggest that the Respondent had been commonly known by the disputed domain name. The panel stated that no evidence had been produced to show that the Respondent had been commonly referred to with the disputed Domain Name, unlike the Complainant, and there is no reason why the Respondent might reasonably be said to have any rights or legitimate interests in registering or using the disputed Domain Name.
The panel thus found that the Respondent had not satisfied the burden of proof under paragraph 4(c) of the UDRP and that the Complainant had rights or legitimate interests in respect of the Domain Name. Regarding the issue of the use of disputed Domain Name in bad faith, the panel concluded that the Respondent’s holding of the disputed Domain Name satisfied the requirement of paragraph 4(a)(iii) of the UDRP in that the Domain Name was “being used in bad faith” by the Respondent by merely holding it and not using from 27 May 1999 to 16 June 2014. for the foregoing reasons, the panel was satisfied that Complainant has sufficiently proven the existence of all the three elements pursuant to paragraph 4(a)(iii) and ordered that the disputed Domain Name, britishindia.com to be transferred to the Complainant.
Manchester united LimIted (previously known as Manchester United plc) [Complainant] Vs Asia bureau.Com sdh bhd [Respondent]
Panel
SINGLE-MEMBER PANEL MR. KHOO GUAN HUAT
Case no.
KLRCA/ DNDR-268-2014
Decision Date
23 DECEMBER 2014
Facts
The dispute arose between Manchester United Limited (previously known as Manchester United plc) which owns a professional football club from England, and Asia Bureau, a private limited company registered under Malaysian law regarding the registration of a Domain Name, manutd. my, under the Malaysian Network Information Centre. The Complainant brought the case before the Kuala Lumpur Regional Centre for arbitration (KLRCA) in accordance with MYNIC’s (.my) Domain Name Dispute Resolution Policy (MYDRP). The Complainant contended that in the view of the large number of Domain Names under the Complainant and the easy accessibility by Malaysian visitors towards the Domain Name, the average public in Malaysia would believe that any Domain Name with the format www. manutd…. is connected to complainant. Therefore, the Respondent’s registered Domain Name which is in dispute is confusingly similar and/or deceptively similar to the Complainant’s registered MAN UTD marks and that the Respondent has registered and/or used the name in bad faith. The Respondent contended that it had purchased the Domain Name in good faith vide an open tender. The Respondent further responded that it was meant as a private and personal blog for the owner’s children to post write ups and pictures of their geese pets named as “Manut” and “Degil” which represents the Domain Name manutd. my. Therefore, since the Domain Name had no reference in any way whatsoever to the Complainant’s marks, the Respondent contended that there is no infringement.
Issues
The issue was whether the Domain Name was identical to or confusingly similar to trademark or service marks in which the Complainant has rights; whether the Respondent had no rights or legitimate interests in respect of the Domain Name; whether the Respondent’s name had been registered or used in bad faith.
HELD
The panel found that the Domain Name manutd.my incorporated the Complainant’s MAN UTD marks. The additional indicator .com or .my is of no significance. There is a general consensus that the relevant test is whether the Domain Name incorporated the dominant and distinguishing part of the Complainant’s mark. Therefore, the panel found that Domain Name manutd.my was identical or confusingly similar to the MAN UTD marks. Further, the panel did not find the argument presented by the Respondent to be convincing. The act of registering a Domain Name does not give the registrant a right or legitimate interest in the Domain Name. Finally, the panel found that the inactive holding of the Domain Name can amount to bad faith usage. The panel followed the decision of Google Inc. v. Googles Entertainment in that bad faith use is not limited to positive action, but such use could be inferred from a Respondent’s passive holding of the Domain Name. Based on the foregoing, the panel found that the Domain Name had been registered in bad faith and ordered it to be transferred to Complainant.
For further information, please contact:
Suganthy David, Kuala Lumpur Regional Centre for Arbitration
enquiry@klrca.org
