Sime Darby wins domain name dispute

International

A Malaysian-based multinational corporation has secured the transfer of the domain name 'simedarby.com' in the case of Sime Darby Berhad Malaysia v Sim e-Darby. The dispute was settled by a panel of the World Intellectual Property Organization, pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP).

Sime Darby Berhad is a well-known corporation listed on the Kuala Lumpur Stock Exchange with several subsidiaries around the world. It is the registered owner of the trademark SIME DARBY. It contended that the domain name, registered by an individual named Sim e-Darby, was confusingly similar and therefore should be transferred to the company.

In order to succeed, the complainant had to prove that:

  • the domain name is identical or confusingly similar to its trademark;

  • the respondent has no rights or legitimate interest in the domain name; and

  • the domain name was registered and being used in bad faith.

The panel held the first element was satisfied as the domain name was undoubtedly confusingly similar to the complainant's mark.

As the respondent had neither submitted a response nor showed up for the proceeding, there was no proof that e-Darby had rights or legitimate interest in the domain name - or that e-Darby even existed.

Lastly, the 'bad faith' element was proved with reference to the decision in Telstra v Ozurls, which stated that the word 'telstra' was not a word that traders would legitimately choose unless they were seeking to create a false association with the complainant. In the absence of evidence from e-Darby that he has a similar name to the complainant, the panel found that the domain name would suggest a false association with Sime Darby.

Having concluded that the UDRP's three requirements were met, the panel ordered the transfer of the domain name to the complainant.

Karen Abraham, Shearn Delamore & Co, Kuala Lumpur

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