Malaysian Ledtronics makes light work of domain name complaint
The Malaysian company Ledtronics Sdn Bhd (LSB) registered 'ledtronics.com.my' on February 26 2004 to host a website offering goods or services relating to light emitting diode (LED) display products/systems and services. Ledtronics Inc, which designs and manufactures LED devices and is the applicant for the LEDTRONICS mark in Malaysia as well as the registered proprietor of the marks LEDTRONICS and LEDTRONICS THE FUTURE OF LIGHT in the United States and the United Kingdom, lodged a complaint under the MYNIC Dispute Resolution Policy (MYDRP) against LSB on November 1 2004.
In response, LSB maintained that it used the domain name for a legitimate and fair purpose, which is to sell its LED products.
In order to succeed under the MYDRP, a complainant must show specifically: (i) the manner in which the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and (ii) why the disputed domain name should be considered as having been registered and/or used by the respondent in bad faith.
The domain name owner, however, can rely on several defences under Paragraph 7 of the MYDRP to show that it has not registered and/or used the name in bad faith. These defences include:
- use of the domain name or preparations to use it or a name corresponding to it in relation to a genuine offering of goods or services prior to being informed of the complaint;
- the domain name owner is commonly known by the domain name, even though it has not acquired any rights in the same trademark or service mark; or
- use of the domain name for legitimate, non-commercial and/or fair purposes without intent to use it for profits or to deceive the public.
It was not denied that the domain name is identical or confusingly similar to the LEDTRONICS mark. However, the panellist noted that LSB was commonly known by the domain name. Citing the World Intellectual Property Organization decision of Credit Management Solutions Inc v Collex Resource Management, in which the panel held that the incorporation of a name could be evidence of a legitimate interest in a domain name where such incorporation pre-dates the complaint, the Malaysian panellist based his decision on evidence that LSB had registered the name Ledtronics Sdn Bhd as early as December 12 1997. Among other things, he also took into consideration the fact that LSB had been a licensed manufacturer under the Sales Tax Act 1972 and the Industrial Coordination Act 1975 since 2000, and was a registered contractor with the Malaysian Ministry of Finance from February 11 2002 to February 10 2005.
In addition, the panellist found no bad faith as LSB had made no association between itself and Ledtronics in its brochures, flyers or on its website.
Accordingly, he refused to order the transfer of the disputed domain name.
Karen Abraham and Janet Toh Yoong San, Shearn Delamore & Co, Kuala Lumpur
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10