simedarby.com

Sime Darby Berhad v. Lee Yi

Case No. D2003-0558

The Complainant is Sime Darby Berhad of Kuala Lumpur, Malaysia, represented by Raja, Darryl & Loh, Malaysia.

The Respondent is Lee Yi of Taipei, Taiwan, Province of China.

The disputed domain name <simedarby.com> is registered with Stargate Communications.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2003. On July 16, 2003, the Center transmitted by email to Stargate Communications a request for registrar verification in connection with the domain name at issue. On July 18, 2003, Stargate Communications transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2003.

The Center appointed Susanna H. S. Leong as the Sole Panelist in this matter on August 27, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant is a Malaysian-based multinational corporation having business interests in areas such as plantations, tyre manufacturing, property, heavy equipment distribution, motor vehicle distribution, energy, general trading and services operations. From a small British company incorporated in 1910, by one William Middleton "Sime" and one Henry "Darby," today the Complainant has grown into an international group with more than 270 subsidiaries operating in 23 countries.

The Complainant is and was, either through its subsidiaries or on its own, the registered proprietor of the trademarks, inter-alia, SIME DARBY, SIME DARBY & DEVICE, SIME, SIME BOND, SIME CRUISER, SIME FRONTIER, SIME INAX, SIME MONZA, SIME PAINTS, SIME PHARMA, SIME TYRESand/or SIME DARBY SPORTS in Malaysia and several other countries. Schedules of the Complainant’s trademarks in their various forms registered in Malaysia and various other countries and copies of the relevant trade/service mark registration certificates have been adduced by the Complainant to show that it has the exclusive right to use these marks in relation to the goods/services for which they have been registered in the countries where registrations have been obtained.

On the outset, it is useful to note that this present proceeding is not the first complaint that the Complainant has filed to seek a return of the domain name <simedarby.com>. The Complainant has, in fact, filed an earlier complaint with the WIPO Arbitration and Mediation Center on October 17, 2001, against a Mr. Sim e-Darby for registering the disputed domain name, and the Administrative Panel in WIPO Case Number D2001-1254 found that the Complainant is the rightful proprietor of the disputed domain name <simedarby.com>. Consequently, the disputed domain name was supposed to be transferred to the Complainant on March 4, 2002. However, due to a series of technical problems which were unresolved, the Complainant was unable to rectify the DNS server information and renew the disputed domain name registration.

Subsequently, the Complainant became aware of a third party holding proprietorship of the disputed domain name when the Complainant’s subsidiary in Hong Kong informed them that a third party had registered the disputed domain name. The Complainant instructed its solicitors, Messrs. Raja, Darryl & Loh, to conduct a WhoIs search on January 2, 2003, which confirmed that a third party had registered the disputed domain name. The said WhoIs search conducted on January 2, 2003, indicated that the disputed domain name is registered under the name Lee Yi who is the Registrant as well as the Administrative and Technical Contact. In an attempt to allow Lee Yi an opportunity to transfer the disputed domain name to the Complainant, the Complainant through its solicitors, Messrs. Raja, Darryl & Loh, issued a cease & desist letter dated January 8, 2003, via electronic mail and courier to Lee Yi informing him, inter-alia, of the Complainant’s legal rights and demanding the transfer of the disputed domain name to the Complainant. The Respondent subsequently responded by electronic mail on January 17, 2003, asking if the Complainant would accept a settlement arrangement. The Complainant subsequently made an offer via electronic mail dated January 21, 2003, to Lee Yi, through its solicitors Messrs. Raja, Darryl & Loh, to pay US$200 to the Respondent for the purpose of transferring the disputed domain name back to the Complainant. The Respondent did not respond to this electronic mail. As there was no response from the Respondent to the said cease and desist letter stated above, the Complainant then instructed its solicitors, Messrs. Raja, Darryl & Loh, to initiate proceedings under the Policy to secure the transfer of the disputed domain name from Lee Yi to the Complainant. The website "www.simedarby.com" is an active website featuring a search portal, and it also advertises that the disputed domain name is for sale and allows users to make further enquiries about the sale of the disputed domain name.

The Complainant essentially contends that:

The Complainant and/or its subsidiaries have acquired substantial reputation and goodwill in the mark SIME DARBY and/or variations thereof. The Complainant is also the registered owner of the trade and service mark SIME DARBY and/or variations thereof and has rights in the mark. It is the Complainant’s contention that the disputed domain name registered under the name of the Respondent is identical and/or confusingly similar to the Complainant’s trade/service mark SIME DARBY and/or the Complainant’s corporate name SIME DARBY.

The Complainant contends here that the Respondent has no legitimate rights to the trade and service mark SIME DARBY and/or the Complainant’s corporate name "Sime Darby" and that the disputed domain name was only registered with the view of selling the same to the rightful owner and making a profit. The Complainant contends that the Respondent does not have legitimate rights in the disputed domain name on the basis that the Administrative Panel in WIPO Case No. D2001-1254 found that the Complainant is, in fact, the legitimate owner of the disputed domain name and, as such, no third party, including the Respondent, has legitimate rights in the same. It is the Complainant’s contention here as evidenced by the proceedings brought by Bioland e.V (WIPO Case No. D2002-1147), that the Respondent is in the business of registering well known trademarks and service marks as his own domain names and thereafter selling them for a profit to their rightful proprietors. The Complainant contends that the Respondent, therefore, has a history of registering domain names in bad faith and is continuing to do so. The Complainant contends that the Respondent does not have legitimate interests in the disputed domain name as the Respondent is not commonly known as "SIME DARBY," neither does the Respondent own a business named "Sime Darby." Further, it is the Complainant’s contention that the Respondent does not own any trademark registrations in relation to the trademark SIME DARBY. As the registered proprietor of the trade and service mark SIME DARBY throughout the world, the Complainant contends that the Respondent does not have legitimate interests in the disputed domain name as the Respondent is not connected to the Complainant in any manner and has not been authorized by the Complainant to register the disputed domain name.

By advertising on the website that the disputed domain name is for sale, the Complainant contends that the Respondent has intentionally registered the disputed domain name to attract commercial gain and is not legitimately using the disputed domain name. Thus, the Complainant contends that the Respondent has obviously registered and used the disputed domain name in bad faith. The Complainant also contends that the Respondent has obviously registered and used the disputed domain name in bad faith by intentionally attempting to attract for commercial gain, Internet users to the website "www.simedarby.com" by creating a likelihood of confusion with the Complainant’s trade and service mark SIME DARBY.

The Respondent did not reply to the Complainant’s contentions.

The Complainant has adduced evidence before the Panel to show that it has been in business for almost a century and is widely known by reference to its trade/service mark SIME DARBY and/or variations thereof. The Complainant has also adduced evidence before the Panel to show that it is the registered owner of the trade/service mark SIME DARBY and/or variations thereof in Malaysia and in several other countries of the world. The Panel finds that the Complainant’s trade/service mark SIME DARBY is not generic or descriptive, but is distinctive of the Complainant’s goods and services. The Administrative Panel concludes that the Complainant has rights in law in its mark SIME DARBY.

Referring to the domain name in dispute, the Panel finds that it is visually and phonetically identically to the Complainant’s mark SIME DARBY. Thus, the Administrative Panel concludes that the domain name in dispute is identical to the Complainant’s mark in which it has rights.

After careful consideration of contentions of the parties and the evidence adduced before the Panel, the Panel concludes that the Respondent does not have rights to or legitimate interests in the domain name in dispute for the following reasons:

(i) the Respondent has not adduced any evidence to show that it is commonly known as "Sime Darby"or that it owns a business named "Sime Darby."

(ii) the Respondent has not adduced any evidence to show that it owns any trademark registration in relation to the trademark SIME DARBY or that it is connected to the Complainant in any manner and had been authorized by the Complainant to register or to use the disputed domain name that is identical to the Complainant’s mark.

The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights to or legitimate interests in the domain name. In accordance with the Rules, Paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence to show cause that he has rights to or legitimate interests in the said domain name.

After carefully considering the contentions of the parties and the evidence adduced before the Panel, the Panel concludes that the circumstances referred to in Paragraph 4(b)(i) of the Policy are applicable to the present case, and upon the evidence of these circumstances, it is adequate to conclude the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that the Respondent has primarily acquired the disputed domain name for the purposes of selling, renting or otherwise transferring the domain name registration to the Complainant or to its competitors.

A strong inference can be drawn from the fact that the disputed domain name resolves to an active website which clearly displays a prominent statement advertising that the disputed domain name is for sale and allows the users to make further enquiries about the sale.

Furthermore, the Complainant has also adduced evidence that the Respondent was prepared to negotiate for a monetary settlement for the transfer of the disputed domain name to the Complainant. Once again, this strongly suggests that the Respondent did not register the disputed domain name with bona fide intentions to use it in connection with the offering of its goods or services, but to profit from the sale of such domain name to its rightful owner or its competitors.

This inference is further compounded by the fact that the Complainant has adduced evidence before the Panel to show that the Respondent has a history of registering domain names in bad faith, and is doing the same again in the present case. The Respondent has, prior to this case, registered the domain name <bioland.com>. Bioland e.V successfully filed a complaint against the Respondent, and the Administrative Panel in WIPO Case No. D2002-1147 ordered the transfer of the domain name <bioland.com> to its rightful owner. The Administrative Panel in <bioland.com> found that the Respondent has registered and used the said domain name in bad faith as he has acquired it primarily for purposes of resale to its rightful owner or its competitors. The facts of the <bioland.com> case are similar to those of the present case.

Therefore, the Panel finds that the Complainant has successfully established that the Respondent has registered and used the disputed domain name in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <simedarby.com> be transferred to the Complainant.