WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mkini Dotcom Sdn. Bhd. v. Privacy Group, Domain / Mohd Amin Yatim

Case No. D2013-0831

1. The Parties

The Complainant is Mkini Dotcom Sdn. Bhd of Kuala Lumpur, Malaysia, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is Privacy Group, Domain of Burlington, Massachusetts, United States of America / Mohd Amin Yatim of Petaling Jaya, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <freemalaysiakini2.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2013. On May 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and also disclosing the underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 24, 2013.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.

On June 20, 2013, the Complainant submitted a Supplemental Filing, and in acknowledging its receipt the Center replied that it would be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its Decision, and whether to order further procedural steps, if any.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on June 26, 2013. 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.

With respect to the point on admission of the Supplemental Filing, the Panel has decided to admit the Supplemental Filing and will render its Decision after considering all the evidence adduced before it.

4. Factual Background

The Complainant is a Malaysian corporation with a principal place of business in Kuala Lumpur, Malaysia. It is the owner and publisher of the online news publication, Malaysiakini, and operator of the website accessible through the “www.malaysiakini.com” website, which provides visitors with daily news in English, Malay, Chinese and Tamil.

The Complainant launched the website accessible through the <malaysiakini.com> domain name on November 20, 1999 with the goal of providing online access to accurate and independent news. The Complainant is one of the few independent media organizations operating in Malaysia today and enjoys a wide readership. The Complainant is also the registered trademark owner of the mark MALAYSIAKINI in Malaysia (Registration No. 2011008436, filing date June 15, 2011) and the United States of America (Registration No. 4330134, filing date June 15, 2011).

The Respondent registered the disputed domain name <freemalaysiakini2.com> on February 10, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is virtually identical and confusingly similar to the trademark in which the Complainant has rights for the following reasons:

1. The disputed domain name incorporates the Complainant’s trademark in its entirety, and is therefore identical or virtually identical and confusingly similar to the Complainant’s trademark.

2. The appending of the word “free” before the trademark is inconsequential and should be disregarded when determining whether or not a domain name is confusingly similar to the Complainant’s mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

1. Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not authorized or licensed to use the Complainant’s trademark. Rather, on information and belief, the Respondent appears to be utilizing the Complainant’s MALAYSIAKINI mark to make available, without permission, proprietary articles, from the Complainant’s Malaysiakini site written by the Complainant’s employees, which the Complainant makes available only by subscription to visitors that pay USD 46 per year to access daily content and USD 137 per year to access daily and archival content. The Respondent’s use of the Complainant’s mark on or in connection with copies of the Complainant’s own articles is not bona fide.

2. This unauthorized use of the Complainant’s MALAYSIAKINI trademark cannot be a legitimate use: use that infringes a valid trademark does not constitute legitimate use under the UDRP.

3. The Respondent has not been commonly known by the disputed domain name. The Respondent is identified as “Privacy Group, Domain” in the WhoIs registration information record for the disputed domain name. On information and belief, the Respondent did not use the disputed domain name in connection with any legitimate business or offering of goods or services before it registered the disputed domain name. Accordingly, the Respondent cannot now claim that it is commonly known by the disputed domain name.

4. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. As described above, the Respondent appears to be operating the <freemalaysiakini2.com> domain name to provide free access to the Complainant’s news articles under the Complainant’s MALAYSIAKINI mark without permission, not information or commentary regarding the Complainant’s goods and services. Such behavior by the Respondent suggests intent to compete with the Complainant and to free ride on the Complainant’s investment of effort and resources to research and develop the MALAYSIAKINI content. Clearly, this use is not a noncommercial fair use.

The Complainant contends that the disputed domain name was registered and is being used in bad faith for the following reasons:

1. The Respondent’s registration of a term that, to the Complainant’s knowledge, has no common meaning, and represents only the Complainant’s products or services, supports an inference of bad faith.

2. The Respondent’s use of the disputed domain names to distribute the Complainant’s copyrighted material without authorization demonstrates that the Respondent is aware of the Complainant and its rights. Bad faith may be shown where the respondent is aware of a complainant’s trademark.

3. The Respondent’s use of disputed domain name to distribute pirated copies of the Complainant’s copyrighted material directly disrupts the Complainant’s business.

4. The Respondent’s website to which the disputed domain name resolves copies the trademark, logo, format and contents of the Complainant’s website at “www.malaysiakini.com”. Such wholesale copying supports the inference that the Respondent registered the disputed domain name was for commercial gain and in bad faith.

5. The Respondent registered the disputed domain name for the sole purpose of distributing without authorization pirated versions of articles from the well-respected and often-visited Malaysiakini news publication. There is no question that the Respondent was aware of the Complainant’s rights, as the website at disputed domain name existed for the sole purpose of distributing the Complainant’s copyrighted materials. Such use of the disputed domain name that is virtually identical to a mark in which the Complainant has rights to distribute pirated versions of the Complainant’s own products is illegitimate and in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the mark MALAYSIAKINI in connection with online publication of news in English, Malay, Chinese and Tamil and the Panel finds that the Complainant has rights and continues to have such rights in the mark MALAYSIAKINI both in Malaysia and in the United States of America.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products or services.

The disputed domain name consists of the Complainant’s MALAYSIAKINI mark in its entirety and the word “free” at the front, the Roman numeral “2” at the end and the top level domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word “malaysiakini” which is identical to the Complainant’s registered trademark MALAYSIAKINI. The word “free” and Roman numeral “2” do not provide sufficient distinction from the Complainant. On the contrary, the addition of the word “free” gives the impression that this website is offering news publications for free and consumers may be confused to think that this website belongs to or is affiliated to the Complainant when such is not the case. It is also an accepted principle that the addition of suffixes such as “.com” being the generic Top-Level Domain is not a distinguishing factor.

Bearing in mind the following factors, in particular the distinctive character of the Complainant’s MALAYSIAKINI mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the MALAYSIAKINI mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “freemalaysiakini2” in its business operations;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the MALAYSIAKINI mark;

3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

4. On the contrary, the Respondent, until apparently around the time of filing of the Complaint, used the disputed domain name to make available, without permission, to Internet users who are not subscribers of the Complainant’s news service, proprietary articles from the Complainant’s official Malaysiakini site written by the Complainant’s employees, which the Complainant makes available only by subscription to visitors that pay USD 46 per year to access daily content and USD 137 per year to access daily and archival content. The Respondent is not an authorised agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use the MALAYSIAKINI mark in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights to or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) A respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and uses the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the fact that the Complainant is an established news provider which, from the evidence adduced by the Complainant, was widely-known and the recipient of various awards and recognitions at the time the disputed domain name was registered, and the fact that the Respondent has made available on the website connected to the disputed domain name proprietary news articles belonging to the Complainant, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.

Furthermore, the Complainant has established a substantial presence on the Internet through the registration of the domain name <malaysiakini.com> which point to the Complainant’s official website, located at “www.malaysiakini.com”. A simple search on the Internet would reveal the presence of the Complainant. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its services and products.

Where the Respondent has chosen to register the disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired a reputation, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Panel would have expected the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to make available, without permission, to Internet users who are not subscribers of the Complainant’s news service, proprietary articles, from the Complainant’s official “www.malaysiakini.com” site written by the Complainant’s employees. The Respondent is not an authorised agent and does not adequately disclose its relationship with the Complainant on the website associated with the disputed domain name. The Panel finds that the Respondent therefore does not have the right to use the MALAYSIAKINI mark in the disputed domain name. Such a behaviour on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained its choice of the disputed domain and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.

The Panel agrees with the Complainant’s contention that by using a confusingly similar disputed domain name, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor in accordance with paragraph 4(b)(iii) of the Policy. This is buttressed by the fact that the Respondent has made available, without permission, on the disputed domain name website proprietary news articles belonging to the Complainant to non-paying Internet users.

Thus, the Panel finds for the Complainant on the third part of the test.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <freemalaysiakini2.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: July 10, 2013