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Cybersquatting: Legal Issues in the USA and Malaysia

 

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On the Interface between the Internet and the Law

The advent of the Internet and its progress had wrought about changes in many dimensions of the society. Consequently, the operations of the society are sometimes reconsidered, redefined, reorganized and reshuffled in order to reap profitably from these paradigm transformations. A most important area to be considered is pertaining to legal matters.  Does the cyber world pass off as His Majesty’s realm, hence the application of common law? And to what extend does existing laws (which hitherto at its creation had not consider this subject) able to regulate the Internet and the Internet community? Without doubt, the rule of law must find application in the cyber world for the simple reason that it is made up of a community of people. If these people are protected by the law in the real world, their entry into the Internet will not relinquish this privilege just as at a person’s visit to a foreign country, the coverage of the citizenry law of his mother country does not cease to be upon him. The principle is even truer in the case of Internet access; the user is bodily in a real country, albeit operating in a new realm designated the cyber world. Therefore, we must conclude that, in a manner of speaking, the King’s rule is applicable to the Internet.

 

Nonetheless, the application of current laws in the internet is not without difficulties. The uniqueness of the cyber world renders many principles operating in and on the businesses of the society weak, if not outright useless, when it comes to analogous businesses on the internet. As was mentioned heretofore, the Internet had revolutionized certain traditional elements in the operations of our society; hence we cannot blindly adopt the existing principles, which were used in the conventional operations, to work on the IT-renovated operations. These principles might be inapt to address some of the technicalities that arise from the innovation of internet technology. Apropos, the same must be said of the law.

 

Current civil and criminal laws cannot justifiably regulate the internet community because of two major inadequacies. The first of these flaws would be the insufficiency of common law and statutory definitions. Legal terminologies are not divine utterances foreign to the common tongues. It must be understood that, technical words aside, the primary principle of logos (word or wordings) in law should be such that as speech is given to man for the communication of his thoughts, the usage thereof must be in the most popular sense. Therefore, the wordings of the law reflect current knowledge of the facts and common use of the language at the time of its creation. Ere the development of internet technology, communication as we know as such today – instant messaging, email, chat rooms, blog etc – were yet to be known. Hence the laws then formed for the purpose of normal communal activities were not able to address internet communal activities fully. This is because the old laws were created (by common usage or legislation) based on the understanding of former facts and without recognizing facts that hitherto were unbeknown. An example can be given concerning the crime of rape. Traditionally, rape has always been defined as penile penetration per vaginam against the consent of the victim.[1] Such definition limits the perpetrators to males and the victim, females. Problem arises alongside the evilness of our time when man was given over to grave depravity to ravish a member of like-gender. In such cases as of where forced anal penetration occurs in a female victim, the charge of rape is often difficult to bring about. In the stead, buggery or sexual assault is the usual conviction sentenced by the courts for these cases. 

 

The second inadequacy is the want of enforcement of law in the cyber world. One reason for this vacuum of cyber-police is the lack of resources in many jurisdictions to enforce even existing laws on internet usage. As the area computer science is a dedicated field on its own, lawyers, whether barrister, solicitors or law enforcers whose enterprise are in the sphere of the internet, need to have the necessary knowledge and skill in order for their dealings to be effective. In order to mitigate unlawful activities on the internet and practice law thereof, these lawyers must have some working knowledge of the technicalities involved, without which will render their practices nugatory. Take for example the practice of evidence in the cyber world; to access the necessary subjects for the purpose of evidence-finding, an investigator must conduct what has come to be known simply as computer forensic, the activity of evidence-finding, salvaging the subjects from computers, the relevant network-path etc. Although like regular forensic, computer forensic make use of some conventional investigative and analytical skills, the latter also requires computer skills in order to salvage the programs of a computer or a network path. Thus, the works are getting more complicated and personnel in this field are expected to be well-equipped. Nonetheless, it is a huge hurdle to cross as there’s a limit to how you can transform police officers or detectives into technicians.[2]

 

As the Internet is fast becoming an integral part of our daily activities, it is critical to ensure the legal matters concerning it is in its proper place; where law is not, chaos rule. Governments of the world are currently involved in the infancy phase of developing the legal framework for internet and computer usage. This includes legislating proper and relevant laws, for example, the Computer Fraud and Abuse Act 1984 of the United States of America, the Computer Misuse Act of the United Kingdom and the cyber laws of Malaysia[3]. These laws collectively are recognition by the legislative bodies of the uniqueness of the computer and internet technology and the need for specific legislations to address issues pertaining to those areas. Of course, the legal framework built is more the formation of new laws. Special organizations had been instituted to enforce computer and internet-related laws. In the United States for example, the Computer Hacking and Intellectual Property (CHIP) units were formed by the US Department of Justice to combat computer crime and intellectual property theft. In 1998, the Polis Diraja Malaysia established the Technology Crime Investigation Branch under the auspices of the Commercial Crime Investigation Division, with its personnel consisting of individuals trained in cyber criminology investigation methods. Finally a joined-effort of governments worldwide had resulted in the creation of the Computer Emergency Response Team (CERT; there are two CERTs in Malaysia, the Malaysian CERT, MYCERT and the Government CERT, GCERT). The CERT organizations’ primary mission is to monitor and address issues relating to computer security among local Internet users. All these activities reflect the concern of the authorities around the world to ensure a secure and trustworthy implementation of the information and communication technology (ICT) infrastructures.

 

The Issue of Cybersquatting[4] and the Development of Law Thereof

The raisons de’etre of this essay is the issue concerning cybersquatting. Technically, cybersquatting was defined by the 1999 American Anticybersquatting Consumer Protection Act[5] as “registering, trafficking in or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else”. In a nutshell, the term means “holding hostage” of a domain name that contains a trademark which belongs to others. Because domain names are registered on a “first come first serve” basis, there are unscrupulous people who took advantage of famous names by purchasing them and then offering to resell to the owners of those names at a higher price. Such is, however, only one form of cybersquatting – though it is probably the origin of this phenomenon - there are other acts which constitute cybersquatting [Borgman, 2000], inter alia:

 

  • Registering a typo (misspelled) version of another’s mark as domain name. E.g. “www.gooogle.com” (instead of “www.google.com” with two ‘o’s)
  • Registering another’s mark and using other top level domain designation than the “.com”. E.g. “www.hotmail.org” (instead of “www.hotmail.com”)
  • Registering another’s mark as part of a domain name. E.g. “www.spidermanparaphernalia.com” for a site that sells Spiderman related items and toys.
  • Registering the mark of a competitor or an opposing organization. E.g. Richard Bucci, a proponent of pro-life movement, registered the domain name of his website that propagates anti-abortion views as “www.plannedparenthood.com”, taking after the name of a pro-choice support organization, Planned Parenthood Federation of America, Inc. [6]

 

All these actions involved the registration of another’s or someone else’s mark (or name) to profit from the advantages connected to that mark and they may constitute infringements of trademarks. The mere acquisition and reselling of marks, however, do not fit into the traditional trademark law’s definition of trademark infringement.[7] Also, holding on to a trademark as a domain name cannot be said to be an infringement because it did not cause any confusion, mistake or deception on the trademark itself. These activities, nonetheless, had caused a huge financial loss to companies such as Avon, Kentucky Fried Chicken, MTV, Panasonic, Taco Bell and others who had to pay large sums of money to acquire the already-registered domain names bearing their million-dollars trademarks.[8] The traditional principles of trademark protection therefore are not sufficient to ensure that no misappropriation of trademark as domain names occurs.[9] Wherefore in the United States, the Anticybersquatting Consumer Protection Act 1999 (ACPA) was formulated to redress such misappropriations.  As an addition to the US Trademark Act 1946[10] (or more popularly known as the Lanham Act), the creation of this Act reflects the concern of the legislature – US Congress – regarding this matter and may also be seen as a culmination of several decisions of the district courts across the United States on this issue. Before the legislation came into existence, the courts in several states[11] had already stood on the opinion that the trade of domain names taking after trademarks constitutes dilution of the trademarks in question; hence such activities are liable for civil actions in pursuant to the Federal Trademark Dilution Act 1995 (or s43(c) of the Lanham Act). [12] Interestingly, as early as 1995, s43(c) was created largely to combat the activities of cybersquatters as expressed by Senator Patrick J. Leahy in the Congress;

 

“It is my hope that this anti-dilution statute can help stern the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others”[13]

 

The Operations of the Anticybersquatting Consumer Protection Act 1999

In pursuing a charge of cybersquatting, the element of mala fide (bad faith) is very much the centrality in the ACPA. In concordance with s43(d)(1)(A), the Fourth Circuit explained cybersquatting as “deliberate, bad faith and abusive registration of Internet domain names in violation of the rights of the trademark owners”.[14] Furthermore, the same court held that the defendant shall not be entitled to benefit from the safe harbour of the domain name, in which he had registered, had he acted, even partially, in bad faith in registering it. As the element of bad faith is critical in the consideration of whether an act constitutes cybersquatting, it is not simply derived from subjective assertions. Section 43(d)(1)(B)(i) listed non-exhaustively, nine factors that the court may consider for the purpose of determining whether the element of mala fide exist:

 

I.                    the trademark or other intellectual property rights of the person, if any, in the domain name;

II.                  the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

III.               the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

IV.               the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

V.                  the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

VI.                the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

VII.             the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;

VIII.          the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

IX.               the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43.

In addition to the element of mala fide, for a appeal to ACPA to succeed, the trademark owner must show that his marks are “distinctive or famous” and the person charged had a domain name that is “identical or confusingly similar” to his marks.[15] Therefore, the three ingredients in identifying a case of cybersquatting are:

I.                    The distinctiveness of the mark in question.

II.                  The degree of similarity of the disputed domain name and the mark.

III.               The mala fide factor on the part of the person charged.

These three ingredients are compulsory for a charge to be actionable under ACPA. From the analysis of cybersquatting cases in the United States, however, it must be emphasized again the critical role (even decisive role) played by the mala fide elements when the courts consider an allegation of cybersquatting. In the paragraph below, we will analyze the case of Mayflower Transit v Dr. Brett Prince to demonstrate the importance of the three ingredients and the primacy of the third ingredient.

 

In re Mayflower, the court decided that the defendant, Dr. Brett Prince’s actions of registering the domain names, “mayflowervanlinebeware.com” and “mayflowervanline.com” satisfied the first two ingredients. As Mayflower Transit is an established trademark (in use since 1927 and registered in 1948 with five separate federal registrations of the term “Mayflower”), the first ingredient of distinctiveness is available. Following the rules set in Shields[16], Pinehurst[17] and Ford Motor[18], the court also held that addendums in the form of generic words will render little effect to the test of similarity between the disputed domain name and the trademark. This pattern of the existence of the first two ingredients is prevalent in the majority of the cases heard; ergo, the decisive factor falls upon the examination of the third ingredient. The court in Mayflower, after inspecting the historical context in which Dr. Prince’s actions were first initiated and thereafter executed therein, announced that there was no mala fide intentions on the part of Dr. Prince in his actions, thus quashing the allegation of cybersquatting. In lieu of the mala fide element, Dr. Prince’s actions were considered to be “bona fide noncommercial or fair use of the mark” as per s43(d)(1)(B)(i)(IV). The course of the proceeding in Mayflower shows that the manner of the application of the three ingredients concurred with our previous postulation that all three must be presence and the third is the foremost when considering an action to be cybersquatting.

 

The remedy granted through a law suit in cybersquatting cases are expressed in s35(d) of the Lanham Act, viz:

In a case involving a violation of section 43(d)(1), the plaintiff may elect, at any time before the final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court consider just.

The owner of the trademark which copyright was infringed by a cybersquatter may opt for compensations as was laid by the statue before the final decision is announced in the court. That way, the case may end at an earlier stage, thus sparing the court and the disputed parties’ time and resources. By the provision of the same Act, if the plaintiff chose to allow the court to decide rather than opting for the statutory damages award, he may be able to recover the profits garnered from the unwarranted use of his mark as well as the lawyer’s fees. Furthermore, the court may increase the award of the damages up to three times the amount of actual damages or alternatively, the court may enter judgment for a reduced amount. Besides monetary award for damages incurred, s34(a) of the Lanham Act allows the owner to apply for an injunction prohibiting the offending use of his mark. Moreover, s43(d)(1)(C) also provides that:

In any civil action involving the registration, trafficking, or use of a domain name … a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. [Emphasis added]

 

ICANN: An Alternative Platform to Address Cybersquatting Issues

The process of litigation may be tedious and often lengthy. Most major organizations cannot afford the publicity of being “called to the courts” and it will usually do more harm than good to the brands that they are representing when the company is involved in a legal battle disputing their trademarks. It is therefore good practice to settle disputes outside of the courtroom amicably. Litigation is more often than not the last resort to a dispute.

 

In the case of cybersquatting, there is an alternative platform for which an aggrieved trademark owner may seek relief. The Internet Corporation of Assigned Names (ICANN), is an international non-governmental body given to the task of “managing domain name system in a pro-competitive manner that would facilitate global participation”[19] The responsibilities of the ICANN are, inter alia, controlling the registration of domain names, laying down the rules regarding the registration and usage of domain names and implementing the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is an expeditious, inexpensive process for resolving disputes arising from trademark/domain name conflicts. As the UDRP is an arbitration procedure, the cases need not be brought to the law courts for hearing. An administrative panel will be appointed to conduct the proceeding and the procedure does not require a lawyer. The Complainant may bring about an action against the Respondent[20] if:

I.                    the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,

II.                  the domain name holder does not legitimate interests in the domain name, and

III.               the name was registered and being used in bad faith

This three factors are rather similar (but not quite) to the three common law ingredients to determined if an act constitutes cybersquatting. The primary element among the three is the question of legitimacy in regard to the interest of the Respondent concerning the domain name. He must demonstrate, in answer to the complaint, whether he carries legitimate interests in the domain name such as;

I.                    that the names used in the domain name is connected to the bona fide offering of goods or services;

II.                  that he is commonly known by the name used as a domain name; or

III.               that he is making a legitimate non-commercial or a fair use of the domain name without the intent to divert consumers or tarnish the trademark at issue.

If the Respondent fails to answer the legitimacy charges, and the Complainant prevails – if all the elements of the complaint are established – the ownership of the domain name must be terminated or transferred to the Complainant. A sample case will be considered in order to provide a better understanding of the operation of the arbitration under UDRP.

 

In Harrods[21], Harrods Limited, a large private company submitted a complaint to the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center against the registrant of the domain name “dodialfayed.com”. The Complainant charged that the Respondent had breach their trademark rights – “DODI FAYED” is a European Community trademark – and had capitalized unjustly on the recent death of Mr. Emad Mohammed al-Fayed by offering the sale of the domain name he held. The panel hearing the case took into consideration the three UDRP factors.

I.                    The slight difference between the domain name version of the mark “Dodi al Fayed” and the trademark Dodi Fayed was deemed to be insignificant. Hence, the panel held that the disputed domain name bore similarity to the trademark.

II.                  Whereas the Complainant can demonstrate their EC trademark rights, and the Respondent was not able to produce such authority. The latter was deemed to have no legitimate interest in the mark.

III.               The Respondent’s offer of the domain name for sale, riding on the publicity surrounding the fatal car accident that caused the death of Mr. “Dodi” al-Fayed and Britain’s Princess Diana, was viewed by the panel as a mala fide conduct on his part.

From the examination of the factors, the administrative panel decided the case for the Complainant and ordered that the ownership of the domain name be transferred. This is the typical progress of an arbitration case conducted under ICANN.[22] As of today more than 1500 cases of alleged cybersquatting has been heard.[23] The arbitration process is considered by trademark experts to be a faster and more practical way of dealing with the matter of cybersquatting compared to litigation.

The Issue of Cybersquatting In the Malaysian Context

While the law concerning cybersquatting seemed to have developed quite a good bit in the United State, the same cannot be said of Malaysia. Rather, for the reason that our cyberspace regulatory law is generally “under construction”, there are not many dedicated statutes to deal with cyberspace and computer related activities. If there be any legal suit or prosecution, the aggrieved parties must depend still on the traditional laws to bring about an action. With this manner of operation, as have been discussed in the earliest part of this essay, the problems related to the interface between the computer and internet technology and the law becomes prevalent. Generic laws, it seemed, are not enough to deal with the issues of ICT. We have with us a “qua problematic model”. From the year 1997 to 2001, 2503 cases of misappropriation of computers are reported in Malaysia[24]; nonetheless, no prosecution was even brought about, needless to say succeed. Of course, the handicap does not lie solely on the legislation. The whole legal institution in Malaysia has yet to be prepared to face the cyber-age. We have with us a whole gamut of hurdles in bringing these criminals or wrong-doers before the courts because of “the problem of detection, enforcement and proof/evidence”.[25]

 

While there is no statutory provision to specifically reckon with the issue of cybersquatting in Malaysia, there is, however, an arbitration procedure in the likeness of UDRP that functions to settle domain name/trademark disputes locally. This procedure was prepared and is overseen by the Malaysian Network Information Center (MYNIC), an organization that manages the “.my” Country Code Top Level Domain[26]. The name proper of the Malaysian UDRP is MYNIC Domain Name Dispute Resolution Policy (MYDRP). All proceedings under MYDRP are administered by the Regional Centre for Arbitration Kuala Lumpur (RCAKL).

 

According to the MYDRP, a complaint can only be brought forth with the presence of two elements, viz[27]:

I.                    the domain name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights; and

II.                  the Respondent has registered and/or used the domain name in bad faith

In contrast to the UDRP, the MYDRP has placed the onus of showing the legitimacy of the registrant’s claim to the domain name solely on the registrant/Respondent. Consequently, the Complainant need not establish this point in his complaint. The issue of the legitimacy of interest arises and is constructed only as a respond to the charge of mala fide.[28] Whether the discrepancy between the UDRP and the MYDRP is merely on the semantic level or on a more dynamic implementation level is a question worthy of consideration. Take for example, the Malaysian case of Binariang Satellite System Sdn. Bhd. v Adanet Sdn. Bhd.[29] which was arbitrated under the UDRP. This case may be compared to Harrods, heard under UDRP as discussed above. In Binariang, the Respondent was the registrant and owner of the domain name “measat.com” in which “MEASAT” is the Complainant’s trademark. The former at one point had offered to relinquish the domain name to the latter at a price, but was refused. The panelists held, in favour of the Complaint, inter alia;

I.                    the Respondent’s domain name and the Complainant’s trademark bore significant similarity,

II.                  the Respondent had no legitimate interest in that name, and

III.               the Respondent had acted in bad faith (the intent of the Respondent to “cash on the situation” by offering the sale of the domain at a high price).

All the three UDRP elements are present in the decision of the administrative panel. What if the case was heard under the MYDRP? Technically, there is an uncanny gap relating to the issue of legitimacy of interest. If the Respondent did not offer the sale of the domain name, will they still be considered to have acted in bad faith because they did not have a legitimate claim to the name? This is an issue worth considering looking at the way the language of the MYDRP was constructed.

 

As for the remedy prescribe under the MYDRP, the award is similar to that of that which is provided in the UDRP. Under paragraph 12.1 of the MYDRP, the Complainant may request that the registration of the disputed domain name be either terminated or transferred to the Complainant. As with the UDRP, no monetary compensation will be awarded. It must be noted here, however, that the decision of the panelists may not always be for the Complainant. In Genting Bhd. v Tan Kim Sin[30], the Complainant charged that the Respondent was a cybersquatter in holding on to his registered domain name “genting.com” which was identical to the trademark of the Complainant. The panel, after considering the history of the case held that:

I.                    The disputed name and the trademark are identical, but evident showed that the name “Genting” was a popular name widely used as trademarks and service marks across Malaysia.

II.                  The Respondent, an owner of a business registered “Genting Dive Discoveries” had a legitimate claim to the domain name.

III.               The Respondent did not register the domain name to capitalize unjustly on the famous brand of Genting Bhd, the Complainant and he did not intent it for the purpose of diluting or causing confusion of the Complainant’s trademark.

Because the complaint did not satisfy two of the three UDRP factors, the panelists’ decision was in the favour of the Respondent.

 

The Position of Malaysian Law Courts In Regard to Cybersquatting Disputes

Although arbitration is the main avenue to settle the disputes of domain names/trademarks, there is an option of bringing the case to the law courts. As was mentioned hereinabove, Malaysia has yet to enact a specific Act to deal with the issue of cybersquatting. Neither has the United Kingdom from whom we inherited our common law traditions. While there is still no legal suit concerning cybersquatting in Malaysia, the possibility of the courts taking after the stance of the UK courts is rather high. As the issue of cybersquatting dealings in the Malaysian law courts is highly theoretical and hypothetical, this essay will only discuss it briefly.

 

The position of the UK courts on cybersquatting is related to the old common law rule of passing off. While the trademark statutes are concerned with the protection of the trademark, the common law is concerned with the protection of the goodwill of the business which uses the marks[31]. Hence, the common law courts are looking at the issue of cybersquatting from a different angle[32]. The significance of this approach to the issue of cybersquatting is that, as businesses are usually localized, difficulties will arise when the disputes involved extra-territorial contentions. Such situations are common as the Internet is global and wide-reaching.

 

The rule of passing off is to prevent the duplication or the usage of a trademark by a competitor which may wrought confusion in the public about the origin of the goods and services attached to the trademark and thus causing detrimental results to the trademark owner’s business.[33] In the maiden English case involving a conflict between domain name/trademark, Harrods Ltd v UK Network Services Ltd & Ors[34], the charge brought against the defendant was that they had committed passing off in holding on to the domain name “harrods.com”. As the defendant did not appear to contest the charges, the court ordered a transfer of the domain name. The Court of Appeal in British Telecommunications Plc v One in A Million Ltd & Ors[35] upheld the rule of passing off in connection to cybersquatting when it established that the registration of a domain name bearing a trademark would make an impression of the registrant being a representative of the trademark and the businesses related thereof. Hence, domain names registration in such manner and “any realistic use of the disputed names as domain names would result in passing off”. Veritably, cybersquatting cases appearing in other Commonwealth jurisdictions are also similarly decided.[36] The question before us presently is whether the Malaysian courts will follow the ratio of the American courts, which is based on a more substantial legal principles formed dedicatedly to deal with cybersquatting or the ratio of the English courts, which is an extension of the old trademark rules. As we are wont to embrace the decisions of the English courts, we may forecast that if there ever be a case of such kind (cybersquatting) being heard in Malaysia, the judgment of the Malaysian law courts would agree with that of the English Court of Appeal in British Telecommunications plc.

 

Some Final Considerations and the Conclusion of This Essay

Although it is inevitable that new laws need to be enacted to address the issue of cybersquatting, proper studies and researches need to be conducted in order that the solutions would adequately reckon with the exiting problems while not creating new ones. One important question would be how far the law should be extended to impede the freedom of expression on the Internet. By restricting the public from freely registering the mark of their choice, are we impeding the basic rights to personal expression? The moral issue aside, should not the ownership of a domain name be granted on a “first come first serve’ basis? But then again, quod meum est sine me auferri non potest – what is mine cannot be taken away without my consent. The owner of a trademark does deserved exclusivity to the brand which he had invested not only money and time but also integrity to build a reputation. Last but not least, about the critical question that was considered a while ago; in forming a stance against cybersquatting, which model should we adopt; the American ACPA or the English courts’ decision? That we inherited the common law from England would more probably mean that which we betook was the spirit of the common law rather than the letters of it. Wherefore it should become common to our people, not taking after that which is common to the Englishman. In that sense, our consideration for forming a stance in this issue should be the state of our country, the interface between the Internet and our law.

 

Law ought to reflect the state of the society (though some may argue otherwise. Probably the truth is where both views meet and blend in an intricate manner). The plan for Malaysia to be placed among the developed nations of the world must not leave out the progression of its legal institution. It is high time for the authority to consider the entire legal framework of our country. As the experts had observed that the ICT advancements of our time is but the early stage of it, the issue of regulating this business must be seriously studied. We are at a transitory point where ICT has revolutionized the way society has been operating since the last 1000 years. Many more changes will inevitably greet us in the near future, even the immediate tomorrow, but our laws had scarcely evolved to reflect these changes. Where law is not, chaos rule; if not properly regulated, all our technology advancements which were supposed to benefit humanity would bring more harm to us. The case of cybersquatting discussed here is just one example. If we do not adequately address this issue, businesses would be threatened with the overthrowing of their heavily-invested trademarks. How then can the Internet offer an edge in conducting business in the 21st century?

 

 

 

 

 

 

 



[1] R v Richard Flecther (1859) Bell CC 33

[2] Raymond Kendall, former Interpol Secretary General. Online

http://lists.insecure.org/lists/isn/2000/Jul/0056.html

[3] The Digital Signature Act 1997 & Regulation 1998; the Computer Crime Act 1997 and the Telemedicine Act 1997.

[4] Or “cyberpiracy”. The term “cybersquatting” will be used throughout this essay in order to demonstrate clearly, its affinity with the Anticybersquatting Consumer Protection Act 1999.

[5] 15 USCS § 1125(d); this is the only piece of legislation in the world that addresses the issue of cybersquatting.

[6] Planned Parenthood v Bucci, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997).

[7] Per cur. in Elvis Presley Center., Inc. v Capece - 141 F.3d 188, 46 U.S.P.Q.2d (BNA) 1737 (5th Cir. 1998) – an act of usage is infringement of a trademark if it causes confusion, mistake or deception concerning the trademark.

[8] Typically, the registration fee for a domain name is about RM400.

[9] For an excellent treatment of the “clashes” between trademarks and domain names, see Abu Bakar Munir, Cyber Law: Policies and Challenges, ch. Trademark v Domain Names: The Emerging Legal Problem. Kuala Lumpur: Butterworth Asia, 1999.

[10] 15 USCS § 1125

[11] Illinois; Actmedia, Inc v Active Media Int’l, Inc. (1996), Intermatic,Inc v Dennis Toeppen (1996). Washington State; Hasbro, Inc. v Internet Entertainment Group, Ltd. (1996). California; Panavision International v Toeppen (1998). Wisconsin; Dorr-Oliver, Inc. v Fluid-Quip, Inc. (1996)

[12] The Federal Trademark Dilution Act 1995 15 USCS § 1125(c)(1); (paraphrase) an injunctive relief of a famous trademark may be applied by the owner of the trademark against the persons who sought to use the said mark for commercial purposes and in the course of action “causes dilution of the distinctive quality of the mark”.

[13] Remarks of Senator Leahy in the US Senate, December 29, 1995, Cong. Rec. S.19312 (104th Cong. 1995)

[14] Virtual Works, Inc. v Volkswagen of America, Inc. (2001, CA4 Va) 238 F.3d 264,267

[15] Shields v Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001)

[16] Ibid.

[17] Pinehurst, Inc. v Wick, 256 F.Supp.2d 424, 428 (M.D.N.C. 2003)

[18] Ford Motor Co. v Greatdomains.com, Inc., 177 F.Supp.2d 635, 641 (E.D.Mich. 2001)

[19] Management of Internet Names and Addresses, a White Paper published by the US Department of Commerce, 1998.

[20] The Complainant, i.e. the person who brought a complaint, usually the owner of a trademark whose exclusive rights to it has been infringed. The Respondent is the registrant of the domain name bearing resemblance to the trademark in dispute.

[21] Harrods Ltd v Robert Boyd (Case No. D2000-0060), March 2000

[22] Other examples include; CMG Worldwide, Inc v Alessandro Bottai (Case FA0004000094661), Yanni Management, Inc v Progressive Industries (Case FA0006000095063) and Calvin Klein, Inc v Spanno Industries (Case FA0007000095283).

[23] ICANN maintains an active list of these administrative proceedings online at http://www.icann.org/udrp/proceedings-list-name.htm

[24] 2503 Pencerobohan Sistem Komputer Dikesan Hingga Jun. Online www.utusan.com.my

[25] Ahmad Shamsul b. Abd Aziz and Zainal Amin b. Ayub, Computer Crimes: Is There a Need For Legislations’ Reform? Published in the Malayan Law Journal

[26] For a fuller treatment on the domain name hierarchy, see Izura, Tay & Chew, Introduction To Cyberlaw of Malaysia, ch. The Law of Trade Marks in Cyberspace (by Tay Pek San). Kuala Lumpur; APC, 2004.

[27] MYDRP, paragraph 5.2

[28] MYDRP paragraph 7.1000094735

[29] WIPO Arbitration and Mediation Center, Administrative Panel Decision Case No. D2000-1122

[30] National Arbitration Forum, File Number: FA0005

[31] Izura, Tay & Chew (op. cit., p 8)

[32] The consideration of the rule of passing off is significantly different from that of the statutory provisions such as the three ingredients of the ACPA 1999. The rule for establishing an action for passing off was laid down in Erven Warnink BV v Townsend & Sons [1980] RPC 31, per Lord Diplock.

[33] Izura, Tay & Chew, op. cit.

[34] [1997] 4 EIPR D-106

[35] [1998] 4 All ER 476

[36] For example, New Zealand: Oggi Advertising Ltd v McKenzie & Ors [1999] 1  NZLR 631;

New Zealand Post Ltd v Leng [1999] 3 NZLR 219