< Back to all publications

Domain Name Registrations in Malaysia: Coherent With Or Dismisses Intellectual Property Rights?

In Malaysia, the Internet commenced with the inception of the first internet service provider that in turn gave rise to the inception of the Malaysian Domain Name Registrar being the Malaysian Network Information Centre (MYNIC). This entity was entrusted with the primary purpose of regulation and subscription of domain names unique to Malaysia or better known as “Country Code Top Level Domain Name” (ccTLD) bearing the domain name extensions “.com.my”, “.gov.my”, “.net.my”, “.org.my”, “.edu.my”, “.mil.my” and the impending “.my” Second Level Domain Names. Todate, more than 30 million domain names has been registered worldwide, including those in Malaysia.

It is clear that registration of domain names are easily available in Malaysia, but the critical issue that remains unresolved is the right to ownership of such domain names for it raises domain name disputes between trade mark and service mark owners and cybersquatters.

Currently, domain name litigation in Malaysia are enforceable within civil proceedings for trademark infringement and/or an action within the tort of passing off via lawsuit in the Malaysian Courts or the subject of domain name dispute resolution conducted pursuant to the MYNIC Domain Name Dispute Resolution Policy (MYDRP) proceeding. Such proceedings are conducted through the Kuala Lumpur Regional Centre for Arbitration (KLRCA). The MYDRP together with the KLRCA has been devised to provide fast resolutions to domain name disputes in Malaysia.

In theory, it can be said that the workings of the MYDRP and the MYNIC Agreement for Registration of Domain Names in Malaysia which sets out the applicable rules, policies and procedures for the application, registration and ownership of domain names in Malaysia are inconsistent with the enacted Malaysian Trade Marks Act 1976.

Section 70B of the Malaysian Trade Marks Act 1976

The provisions of Section 70B of the Malaysian Trade Marks Act 1976 [as amended and inserted through the Trade Marks (Amendment) Act 2001 (A1078)] clearly sets out provisions with regard to protection of well known marks in Malaysia. Proprietors of well known marks are entitled to restrain by way of injunction the use of any mark that is identical or nearly resembles well known trade marks or an essential part of the well known mark without its proprietor’s consent and where such unauthorised use would likely to deceive or cause confusion to members of the public.

Clause 2.6 of MYNIC’s Agreement:

Clause 2.6 of MYNIC’s Agreement for Registration of Domain Names affirmed by MYNIC with all applicants and registrants of domain names states as follows:

“2.6 that it is not the duty nor responsibility of MYNIC to screen requested domain names to determine whether the Registrant is entitled to register or have any rights in the domain name or whether the domain name may infringe upon the right(s) of a third party”; thereby denouncing liability (See also Clause 2.8 of MYNIC’s Agreement for Registration of Domain Names) on unlawful registrations by cybersquatters and those who do not own intellectual property rights to legitimately own specific domain names containing derivations of well known marks.”

Clause 3.3, Clause 3.6 and Clause 3.7 of MYNIC’s Agreement:

Clause 3.3, Clause 3.6 and Clause 3.7 of MYNIC’s Agreement for Registration of Domain Names imposes the following obligation on all applicants and registrants of domain names in Malaysia as follows:

“3.3 the domain name applied for does not infringe any registered or unregistered trademark or any other intellectual property rights of a third party; the registration or use of the domain name is not for any illegal and/or unlawful purposes, and does not infringe the rights of any party; and 3.7 the domain name applied for is valid and in compliance with all relevant applicable (Malaysian) laws.”

Clause 12 of MYNIC’s Agreement:

Clause 12 of MYNIC’s Agreement for Registration of Domain Names stipulates obligations pursuant to the governing laws and jurisdiction for the Agreement as follows:

“12. This Agreement shall be governed by and construed in accordance with the laws of Malaysia and the Registrant and MYNIC submit to the exclusive jurisdiction of the courts of Malaysia.”

Despite the above explicit, clear and precise stipulations that the Agreement is subjected to the statutes and enactments of Malaysia, including the provisions of Section 70B of the Malaysian Trade Marks Act 1976 concerning protection to well-known marks, it is to be noted that registration of domain names using derivations from well-known marks are still permitted to parties who do not possess sufficient goodwill and/or any legitimate expectation in intellectual property for ownership of domain names.

Although there are many instances where cybersquatters who are privy to the Agreement and having been ordered to transfer domain names to rightful owners of well known marks, there has been no initiative to commence legal action against cybersquatters in their contractual capacity as provided for by the Agreement.

With the current trend of domain name registrations in Malaysia, it would be indeed prudent for trademark owners to police their marks and prevent other parties from infringing on their trademarks and service marks through early registration of domain names effectively preventing unscrupulous cybersquatters from obtaining rights over corresponding domain names.

Resolution of Disputes

With regard to resolution of domain name disputes in the Kuala Lumpur Regional Centre for Arbitration (KLRCA) in Malaysia pursuant to the MYNIC Domain Name Dispute Resolution Policy (MYDRP), the progress of quick and cost-effective resolutions is on the right path to resolving domain name disputes arising over well-known marks. Confidence is certainly not misplaced on the KLRCA to continue on with domain name disputes taking into consideration the rights of proprietors of well-known marks.

Notwithstanding the above, the Malaysian Court still retains jurisdiction to adjudicate domain name disputes. The Malaysian Courts have indeed monumentally protected the rights of well-known marks in the landmark authority of Petroliam Nasional Berhad & Others v Khoo Nee Kiong [2003] 4 MLJ 216 that concerned registration of domain names namely ‘petronas-dagangan.com’, ‘petronasgas.com’, ‘mypetronasdagangan.com’, and ‘mypetronas.com’, its respective derivation being constituted of the “PETRONAS” mark, a significant household mark in Malaysia belonging to the proprietor Plaintiff. In this case, the Malaysian Court granted prohibitory injunctions against the Defendant preventing continuous use of the infringing domain names. Similarly, in the decision of Intel Corporation v Intelcard Systems Sdn. Bhd. & Others [2004] 1 MLJ 595 the Malaysian Courts granted an interim injuction whilst affording protection to the Plaintiff, the proprietor of a worldwide well-known mark.

Conclusion

Therefore, with the protection afforded to well-known marks by the Malaysian Courts and the dispute resolution provided by the KLRCA pursuant to the MYDRP, it would be welcoming for Malaysia to initiate the next step by regulating the applicable rules and procedures for registration of new and existing domain names consistent with the Malaysian Trade Marks Act 1976. Such coherent regulation of domain name registration would indeed acknowledge, develop and abridge further intellectual property rights of well-known marks in Malaysia in the information sector essential to a nation moving forward technologically in the 21st Century.

Leave a Reply

Your email address will not be published. Required fields are marked *