In Sime Darby Berhad Malaysia v. Mr. Sim e-Darby (2002) over a domain name ‘simedarby.com’ by respondent in Canada, the matter went to WIPO Arbitration and Mediation Center, which heard in accordance with the Policy and Rules of the Uniform Domain Name Dispute Resolution Policy (UDRP). The decision of Panel was to transfer the impugned domain name to the complainant, because, among other things, the domain name registered by the Respondent is identical or confusingly similar to the “Sime Darby” trade mark in which the Complainant has rights.
This problem is equally supposed to have been settled in Malaysia. In a local case of Petroliam Nasional Bhd & Ors v Khoo Nee Kiong (2003) Malaysian court decided, among other things, that cyber squatting may be regarded as ‘passing off’. The first plaintiff in that case was a well-known national petroleum corporation. The second plaintiff was one of the marketing arms of the first plaintiff and the third plaintiff was in the business of processing and transmitting natural gas and it conducted its gas business under the trade name ‘Petronas Gas’. The defendant was an individual carrying out trading operations as a registered sole proprietor under the trade/business name ‘Araneum Consulting Services’ and was in no way associated with the plaintiffs.
It was held that by registering the said domain names which contained the word ‘Petronas’, there was a serious issue to be tried in that the defendant was making a false representation to persons who may have consulted the register that the registrant, ‘Araneum Consulting Services’ was connected or associated with the name registered and thus the owner of the goodwill in the name ‘Petronas’.
The court maintained that by registering the said domain names, the defendant had eroded the exclusive goodwill in the name ‘Petronas’ which had cause damage to the plaintiffs. The said domain names were instruments of fraud and any realistic use of them as domain names would result in passing off. This would cause irreparable injury and damage to the plaintiffs and by virtue of this, the balance of convenience tilted in favour of the plaintiffs.
In the circumstances, the plaintiffs had shown that there was a threat of passing off and trademark infringement on the defendant’s part which was likely to cause confusion in the minds of consumers of the plaintiffs’ products, thereby resulting in irreparable injury and damage to the plaintiffs’ trade, business and goodwill. Therefore, as the plaintiffs had provided an undertaking as to damages, the interim injunction sought for ought to be granted.
