Legitimate trademark not enough to secure 'genting.biz'
A World Intellectual Property Organization panel has found in the domain name dispute of Genting Bhd v Tan Kim Sin that under the Start-up Trademark Opposition Policy (STOP), a legitimate claim to a trademark is not always enough for a domain name to be awarded to a complainant, especially if the other party also has a reasonable claim and there is no evidence of bad faith.
The complainant was Malaysian conglomerate Genting Group, which has a history of strongly protecting its trademark (see Online casino reclaims domain name from cybersquatter). The respondent was the owner of Genting Diving Discoveries, who planned to start a diving centre in Genting Village on Tioman Island, and had registered 'genting.biz' as it reflected both the location and name of the business.
Pursuant to STOP, a complainant must prove that:
- the disputed domain name is identical to a trademark or service mark in which it has rights;
- the respondent has no rights or legitimate interests in the disputed name; and
- the name has been registered or is being used in bad faith by the respondent.
The panel found that Genting Group had no trouble satisfying the first requirement. However, it held that the respondent also had legitimate rights to the name and had not acted in bad faith by registering the name. Having concluded that not all of STOP's three elements had been met, the panel dismissed the complaint.
Karen Abraham, Shearn Delamore & Co, Kuala Lumpur
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