WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mesiniaga Berhad v. Rare Domain Worldwide
Case No. D2002-1007
1. The Parties
The Complainant is Mesiniaga Berhad, of Subang Jaya, Selangor Darul Ehsan, Malaysia, represented by Deepak Pillai, Solicitors of Malaysia.
The Respondent is Rare Domain Worldwide, 1 Stop Domain Registration and Trading of Fremont, California 94538, United States of America; also 1, Stop Domain Registration of California 92543-7070, United States of America.
2. The Domain Names and Registrar
The disputed domain names: <mesiniaga.com>, <mesiniaga.net> are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2002. On October 31, 2002, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On October 31, 2002, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2002. The Response was filed with the Center on November 26, 2002.
The Center appointed Dr. V. K. Agarwal as the sole panelist in this matter on December 30, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant made supplemental submissions which was a tape recorded conversation with the Respondent. The Administrative Panel did not find it necessary to consider the supplemental submissions made by the Complainant and the response of the Respondent thereon.
4. Factual Background
From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:
The Complainant is the manufacturer of various computer and paper goods. The trademark "Mesiniaga" is registered for the goods of "computer software, hardware, electrical apparatus and instruments", all included in class 9. Similarly, the Complainantís trademark "Mesiniaga" is also registered for the goods of "paper and paper articles, cardboard and cardboard articles" in class 16. These two trademarks were registered on July 10, 1985. They are registered only in Malaysia. These trademarks are valid and subsisting. The trademark Mesiniaga" has been formed from a union of the Malay (national language of Malaysia) words "Mesin" means machine and "Niaga" means business. The Complainant became a public limited company on December 24, 1996, and was listed on the Kuala Lumpur Stock Exchange as "Mesiniaga Berhad". Till recently, the Complainant was exclusive agent for IBM in Malaysia. However, IBM is one of the substantial shareholders in Mesiniaga. "Mesiniaga" also appears on the web site on IBVM, namely, www.ibm.com.
In his response, the Respondent has not indicated much about its activities except that they are "active secondary domain trader". Hence, the activities of the Respondent are not known.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy is applicable to this dispute.
In relation to element (i), that is, the domain names are identical or confusingly similar to a trade or service mark in which the Complainant has right, the Complainant contends that the domain names <mesiniage.com> and <mesiniaga.net> in question are identical or confusingly similar to the trademarks "Mesiniaga" that have been registered and are owned by the Complainant. The Complainant has been using these trademark since 1985, and has acquired substantial goodwill and reputation in the mark "mesiniaga" and the same has become synonymous with the Complainant and its business. Any person looking at these domain names will presume that they have reference to the Complainant and his business.
In relation to element (ii), that is, the Respondent has no right or legitimate interest in respect of these domain names, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain names <mesiniaga.com> and <mesiniaga.net>. The Respondent has not disclosed its complete activities. Further that the Respondent is not making a legitimate non-commercial or fair use of the said domain names in connection with a bona fide offering of goods and services. The word "Mesiniaga" has no meaning in English language. The Respondent registered the domain names for the sole purpose selling the same.
Regarding the element at (iii), that is, the domain names were registered and are being used in bad faith, the Complainant contends that after they have made the present complaint, the Respondent have made offers to sell the said domain names to the Complainant and to the general public. Therefore, this constitutes bad faith. In support of its contentions, the Complainant has relied on WIPO decisions in WIPO Case No. D2000-1105, Skrine v. Skrine & Ors, and WIPO decision in WIPO Case No. D2001-1254, Sime Darby Malaysia v. Mr. Sim e-Darby .
The disputed domain names are registered only in Malaysia for class 9 and 16 goods. As long as the domain names are not used as trademarks for these classes of goods it is not deemed to have infringed the trademark. These domain names are generic names for various applications. The records of "My Information Center" shows that the domain registration <mesiniaga.net> has changed hands three times. In the year 1998, it was owned by an Indonesian owner who has the intention to set up a business in the trading of Machine Tools. The current Singapore owner has bought the domain name and has also finally decided to sell the domain to recover her cost.
The Complainant has been in computer business for such a long time but have not bothered to protect their internet identity. A late comer in the internet identity should not be allowed to make a claim to the domain names. Further that, other TLDís such as ".NET", ".ORG", ".BIZ", etc. are also in existence. According to a search made by the Respondent, these TLDís are still available. Thus, the Complainant can use these TLDís.
The Respondent has further stated that they have no intention to infringe any trademark of the Complainant. Further that, "the domain owners entitled to compensation by the complainant should panels decide that the complainant has the right on the domains".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has a right; and
(ii) The Respondent has no right or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered in bad faith and are being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to domain names <mesiniaga.com> and <mesiniaga.net>. The Complainant is the registered owner of the trademark "mesiniaga" in Malaysia. This indicates a relationship between the Complainantís mark and the domain names in question. There is no doubt that the domain names are confusingly similar to the trademark of the Complainant. The Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not made any submission to controvert the said elements. It is therefore presumed that the above circumstances do not exist in this case. "Mesiniaga" is the registered trademark of the Complainant. It is but evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain names incorporating the said word and that no body will use the words "mesiniaga" unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on its web site or location.
The contention of the Complainant is that the present case is covered by the first circumstance. The fact that the said domain names are available for sale to the Complainant or to the general public is ample proof of the fact that the Respondent has registered the said domains in bad faith. In fact, the Respondent has admitted that it is an active secondary domain trader. The Administrative Panel agrees with the said contention of the Complainant. Further, the said web site has not been activated by the Respondent till the date of filing of the complaint. Thus, "inaction" or "passive" holding of a domain name amounts to the registration and use of the domain names in "bad faith".
In the light of the forgoing findings, namely, that the domain names are identical or confusingly similar to the trademarks in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain names and that the domain names were registered in bad faith and are being used in bad faith, the Administrative Panel directs that the domain names <mesiniaga.com> and <mesiniaga.net> be transferred to the Complainant.
V. K. Agarwal
Dated: January 17, 2003