FlyFirefly soars to success in domain name dispute

In FlyFirefly Sdn Bhd v Nikabina IT MSC Sdn Bhd (Case RCA/Dndr/2007/11), a three-member panel of the Regional Centre for Arbitration Kuala Lumpur has ordered the transfer of the domain name 'firefly.com.my' to FlyFirefly Sdn Bhd under the Malaysian Network Information Centre's Domain Name Dispute Resolution Policy.

FlyFirefly is a subsidiary company of Malaysian Airlines System Berhad, the leading Malaysian national airline company (which has over 20 subsidiary and associate companies). It has filed trademark applications in Malaysia under Classes 39 and 43 of the Nice Classification for the marks FIREFLY, FIREFLY (and design) and FIREFLY AIRLINE (in Chinese characters). It conceptualized the use of the mark FIREFLY for its services in early January 2007 and the services were officially launched on March 17 2007.

The respondent, Nikabina IT MSC Sdn Bhd (an IT solution company involved in the telecommunication, e-commerce and software development industry), registered the relevant domain name on January 31 2007, but admitted that the domain name did not belong to it. It confirmed that it had registered the domain name on behalf, or in the interest, of Mohammad Aswari bin Japar, the owner of a sole proprietorship known as Interprod Trading (which was registered on November 6 1995). On March 19 2007 Malaysian Airlines received a proposal from Globalcomm Network offering to sell the relevant domain name at M$1.5 million. On April 9 2007 Globalcomm made a second proposal to Malaysian Airlines offering to sell the domain name at a reduced price of M$500,000.

FlyFirefly contended that Nikabina had registered the domain name in bad faith for the purpose of commercial gain. Moreover, the issue was exacerbated by the fact that Nikabina:

• was a dormant company (based on a Malaysian Companies Commission search report);
  
  
• had no right or legitimate interest in the domain name, as the mark FIREFLY has no connection whatsoever with Nikabina's registered business and/or products;
  
  
• had no intention to carry out any business using the website hosted under the relevant domain name;
  
  
• had misused the registration of the domain name based - according to FlyFirefly - on leaks of information from insiders in relation to FlyFirefly's launching of its community (no frills) airline services using the name/mark FIREFLY.

To succeed on its claim, FlyFirefly had to establish that:

• the disputed domain name is identical or confusingly similar to a trademark or service mark in which FlyFirefly has rights; and
  
  
• the domain name had been registered and/or used by Nikabina in bad faith.

Referring to the FIREFLY applications filed by FlyFirefly, the panel had no difficulty in finding that the domain name was identical to FlyFirefly's trademark. Lastly, the panel took the view that:

• Nikabina had no right or legitimate interest in the relevant domain name, as it had no connection with Nikabina's business; and
  
  
• Nikabina had registered the domain name in bad faith.

Interestingly, Aswari bin Japar applied to be made an interpleader in relation to this case. The panel declined the request on the grounds that Aswari bin Japar was not a respondent, since the domain name was registered in the name of Nikabina and not in his name. The panel held that there was no provision for interpleader or third-party proceedings under the Domain Name Dispute Resolution Policy Rules.

Karen Abraham and Janet Toh Yoong San, Shearn Delamore & Co, Kuala Lumpur