Cybersquatting: Legal Issues in the USA and Malaysia
---------------------------------------------------
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:
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.
[10] 15 USCS § 1125
[11]
[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
[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
[27] MYDRP, paragraph 5.2
[28] MYDRP paragraph 7.1000094735
[29]
WIPO Arbitration and
[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
[33] Izura, Tay & Chew, op. cit.
[34] [1997] 4 EIPR D-106
[35] [1998] 4 All ER 476
[36]
For example,
New Zealand Post Ltd v Leng [1999] 3 NZLR 219