Domain Name Dispute

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Short Commentary on Domain Name Dispute

Due to the modernity of the Internet and the many elements and innovations that surface regularly, individuals, businesses, and governments are forced to learn as they go along. The many aspects of domain names, as discussed throughout the report, will all be affected and changed in unique, and often unpredictable, ways. Regarding the availability of domain names that exist, most research indicates that there will not be a shortage. In fact, one source stated “physically speaking, the possible number of domain names is virtually infinite” (A Vision for the New Era of Domain Names…, 1998). However, the issue then becomes the availability of “good” domain names versus any meaningless configuration of letters, numbers, and symbols. New actions are being taken, such as the recent addition of TDL’s, that will alleviate these concerns by “unclogging the bottleneck from the shortage of ending and the inability to register short and simple Web addresses (Mosquera, 2000). The Internet and technology industry are moving at a rapid and unpredictable pace leaving little time for preparation, and furthermore, making it virtually impossible to “get ahead of the game”. Ones only choice is to attempt to keep up with information and innovations, handle current issues with strategic effort, and avoid getting left behind- at all costs. The way to do this is to be constantly aware of activities that might affect you or your business by actively participating in perpetual learning.

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Global Issues in Domain Name Dispute

The Internet is worldwide. While the United States currently has the greatest share of the market, the rest of the world is rapidly catching up. Due to the increasing number of new web sites around the world, the pressure to provide “good” original domain names is at an unprecedented high. This pressure exerted on the market has caused domain name infringement issues to become a major concern for the Internet. As seen in the previous section, cybersquatting and trademark infringement are major national issues. Because of expanding global boundaries, the national problems are becoming increasingly more complex due to the influence of foreign court systems.

International Domain Name Control


Domain names themselves are in jeopardy from unscrupulous and/or unknowing competitors. Virtual pirates will knowingly take a domain name and make it their own. For example, the company, MacHost.com had its domain name stolen, its web page copied, and its business model duplicated to the point that the new company is a mirror image of the original (Wheeler, 2000). All this is possible because the usurper was from another country. In order for the new company to be established, the new company must simply add the country’s suffix onto the end of the domain name (www.machost.com.au). This new e-business has stolen a “tried and true” business plan ready to take orders and process them. One drawback however, is that the “.au” suffix will have a quarantine effect on the new company and the only business conducted will be that which is done in Australia. The owners of the original MacHost feel that their Australian counterpart is stealing their market and they want it back. Serious issues will arise for the original holder of MacHost, when he tries to take back control of the domain name from the usurper, MacHost / Australia.


The problem of retaining global control of the MacHost domain name, is that it is registered only in the United States, and while they registered their domain name on Feb. 10, 1997, more than two years before MacHost / Australia, the Australian counterpart of MacHost has the legal registration in Australia (2000).


The above is an excellent example of cybersquatting with an international flair. This would seem to be an application for ICANN and it’s use of the UDRP. If the two companies were in the United States, ICANN would determine that the MacHost / Australia was using a confusingly similar domain name and was rerouting business from the legitimate website to it’s own. That would then be determined to be a bad faith use of the domain name and the domain name rights would be returned to the original user. However, the ICANN / UDRP has no authority in a country which has not signed an agreement with them. So far, the ICANN has had little success in convincing other countries to cooperate with them to bring order and fairness to the Internet. The only attempt at recourse that MacHost has is through the Australian court system, and that outcome is questionable at best. Trademark law is protective of the citizens of their host country and the courts usually will not return domain name rights to the original owner no matter when the original domain name was registered. Furthermore, at present, the only way to protect a domain name is to register it in every country where that company wants to do business. These registrations can be very expensive, but not as expensive as fighting to get the domain rights back or losing that market share to a cybersquatter.


One concern that trademark owners have is that with the new registration TLDs (Top Level Domains), there will be rash of international domain name piracy. In the United States, there is security in that the U.S. Patent and Trademark Office (PTO) does not recognize any difference materially between a trademark and a change in the TLD, therefore, the trademark and it’s corresponding domain name will be protected (Auslander & Royce, 2000).


Unfortunately, this is not the case when dealing on a global level. The best protection against those who would duplicate a domain name is for the original domain name holder to register its domain name and trademarks in the country where they intend to do business. They should also register those domain names and trademarks in the language of that country. Another protection device would be to have all licenses, contracts, or click-through agreements translated into the local language of the country where the domain name is being registered.

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Domain name’s issue under Trademark Act 1976

According to the section 14 (1) (a), (c), (e) of the Trademark Act 1976 we can see some conditions and circumstances of the prohibition on the registration before someone can argue about his/her own domain name. Section 14 stated that:

(1) A mark or part of a mark shall not be registered as a trade mark – (a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law;

(b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;

(c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation; [Ins. Act A881]

(d) if it is identical with or so nearly resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor; [Ins. Act A1078]

(e) if it is well-known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for: Provided that the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known mark, and the interests of the proprietor of the well-known mark are likely to be damaged by such use; [Ins. Act A1078]

(f) if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods; or [Ins. Act A1078]

(g) if it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question. [Ins. Act A1078]

(2) Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement shall apply for the purpose of determining whether a trade mark is a well-known trade mark. [Ins. Act A1078]

Article 6 (1)bis of the Paris Convention stated as follows:

Marks: Well-Known Marks(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

Paris Convention for the Protection of Industrial Property, Article 6bis
Marks: Well-Known Marks

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Article 16, Rights Conferred

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

Prejudicial in the section 14 above can be defined as “preconceived judgment” (source: Elizebeth A. Martin, Jonathan Law, A Dictionary of Law, Sixth Edition, Oxford University Press, 2006, page 405) or “tending to injure or impair”(source: http://www.merriam-webster.com/dictionary/prejudicial)

In addition, section 19 (2) (a-b) of the Trademark Act prohibited identical mark. Section 19. Identical trademarks.

(2) No trade mark shall be registered in respect of any services or description of services –

(a) that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same services or description of services or in respect of goods that are closely related to those services; or

(b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion.

Besides that, section 40 of the Act of 1976 stated about the Acts, not constituting infringement.

(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark –

(a) the use in good faith by a person of his own name or the name of his place of business or the name of the place of business of any of his predecessors in business;

Section 70B also is one of the vital section to discuss in this issue.

“Section 70B, Protection of well-known trademarks. [Ins. Act A1078]

(1) The proprietor of a trade mark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known trade mark is entitled to restrain by injunction the use in Malaysia in the course of trade and without the proprietor’s consent of the trade mark which, or the essential part of which, is identical with or nearly resembles the proprietor’s mark, in respect of the same goods or services, where the use is likely to deceive or cause confusion”

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