Skrine succeeds against cybersquatter

Malaysia

One of Malaysia's leading law firms, Skrine & Co, has been awarded M$230,000 in damages. The High Court ordered the award against My Information Centre Sdn Bhd for violating Malaysia's Trademark Act by registering, but not using, 'skrine.com'.

The dispute between the two firms began in April 1999 when My Information Centre registered the domain name 'skrine.com' without the licence, consent or authority of the complainant. In December 1999 Skrine filed suit in the High Court. One month later, the plaintiff learned that the domain name had been re-registered to a Chinese resident named Skrine Low Chit Sin.

In August 2000 the plaintiff obtained the transfer of the domain name from a panel at the Arbitration Centre of World Intellectual Property Organization. This award did not preclude the Malaysian High Court from making an additional award of M$30,000 for the cost borne by the plaintiff in investigation and retrieving the domain name, and M$200,000 as a deterrent against further cybersquatting by My Information Centre.

This outcome is significant as, historically, an infringement of Malaysia's Trademark Act has been held to occur only when a trademark belonging to another is used in a way as to confuse the public. Therefore, the mere act of registering a trademark as a domain name (and not using that name for an active website) would not amount to 'use'. The court in this case took a different approach, deciding that the mere registration of a deceptive domain name amounts to passing off.

Mariette Peters, Zul Rafique & Partners, Kuala Lumpur

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