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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sime Darby Berhad Malaysia v. Mr. Sim e-Darby
Case No. D2001-1254
1. The Parties
The Complainant is Sime Darby Berhad, a publicly listed company incorporated in Malaysia, with its registered office at 21st Floor, Wisma Sime Darby, Jalan Raja Laut, 50350 Kuala Lumpur, Malaysia.
The Complainant is represented by Ms. Jin Nee Wong of Messrs. Raja, Darryl & Loh, 18th Floor, Wisma Sime Darby, Jalan Raja Laut, 50350 Kuala Lumpur, Malaysia.
The Respondent is Mr. Sim e-Darby, an individual having an address at PO Box 1233, Toronto, Canada, 526452. Nothing more is known of the Respondent. The Respondent has taken no part in the proceedings and is not represented by counsel.
2. The Domain Name and Registrar
The Disputed Domain Name is <simedarby.com> ("the Disputed Domain Name").
The Registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the WIPO Center") by email on October 17, 2001, and in hard copy form on October 19, 2001. An Acknowledgement of Receipt of Complaint was issued by the WIPO Center on October 19, 2001. The WIPO Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly filed and notified in accordance with paragraph 2(a) of the Rules.
On November 1, 2001, the Registrar verified that <simedarby.com> is registered through Tucows, Inc. and that Mr. Sim e-Darby is the current registrant, Administrative Contact, Technical Contact and Billing Contact. The Registrar also confirmed that the Policy is applicable to the Domain Name and that the Domain Name has been put "on hold" for the duration of this dispute. The Respondent has neither requested that the disputed Domain Name be deleted from the domain name database nor sought to terminate its agreement with the Registrar. The Respondent is therefore bound by the provisions of the Policy.
The WIPO Center notified the Respondent of the Complaint by email, fax and courier on November 5, 2001, in the usual manner, and informed the Respondent that the deadline for sending his Response to the Complainants and to the WIPO Center was November 25, 2001.
There was no response from the Respondent and on December 5, 2001, the WIPO Center sent to the Respondent a Notification of Respondent Default.
The undersigned Panelist was contacted by the WIPO Center on December 10, 2001, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center on December 19, 2001. The Panelist finds that the Panel was properly constituted in accordance with the Policy and the Rules.
No further submissions were received by the WIPO Center or the Panelist and the original date scheduled for the issuance of the Panel’s Decision was January 4, 2002. The revised date for the issuance of the Panel’s Decision is January 22, 2002.
4. Factual Background
The Complainant is a Malaysian-based multinational corporation listed on the Main Board of the Kuala Lumpur Stock Exchange with market capitalization in excess of US$3 billion. The Complainant states that its core business activities are ‘plantations, manufacturing, property development, heavy equipment and regional trading’.
The name of the Complainant derives from the surnames of its co-founders, Messrs. Sime and Darby, who incorporated the company in 1910. The Complainant is the registered proprietor, either in its own right or through its subsidiaries, of numerous trade marks for "SIME DARBY" and "SIME DARBY and Device" in Chile, Spain, Italy, Malaysia, the PRC, Brazil and Japan. Most but not all of these trade marks were registered before the Complainant first became aware of the ownership of the Disputed Domain Name in or about 1999.
The Respondent is Mr. Sim e-Darby, also stated to be the Administrative, Technical and Billing Contacts for <simedarby.com>. The Technical Support for the Disputed Domain Name is directNIC.com at Intercosmos Media Group Inc. The Respondent does not have any connection with the Complainant.
As at January 15, 2002, the <simedarby.com> website shows the homepage of Sime Darby Pilipinas Inc, a Filipino subsidiary of the Complainant. According to a search at "http://www.uwhois.com" on the same date, the Respondent is still the registered owner of the Disputed Domain Name.
5. Parties’ Contentions
The Complainant contends that it and its subsidiaries have acquired substantial reputation and goodwill in the trade mark "SIME DARBY". The Complainant further submits that the Disputed Domain Name is identical and/or confusingly similar to the trade mark and the Complainant’s corporate name. As such, the Complainant contends that the relevant internet-using public might reasonably associate the disputed Domain Name with the Complainant.
Additionally, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and believes that the Disputed Domain Name was registered and has been used ‘in bad faith’.
The Complainant relies on the decision in Skrine v Skrine & Ors (WIPO Case No. D2000-1105). In the Skrine proceedings, a Malaysian company, My Information Centre ("My Information"), was the registered proprietor of the domain name <skrine.com>. The well-known Malaysian law firm, Skrine & Co., approached the director of My Information, Woo Wai Heng, to arrange for the transfer of the domain name to Skrine & Co. whereupon Mr. Woo advised that the domain name was for sale. The domain name was re-registered when Skrine & Co. filed a Writ of Summons against My Information and Mr. Woo in the High Court of Malaysia. The Panel in those proceedings declined to accept that the new registered proprietor, one Mr. Skrine Low Chit Sin, was a natural person. The inference was that Mr. Skrine was an artifice created to defeat the WIPO proceedings instituted by Skrine & Co. My Information and Mr. Woo both feature in the current proceedings. The Complainant submits that Mr. e-Darby, like Mr. Skrine, is a work of fiction.
The Respondent has not filed a Response within the time limit prescribed by the WIPO Center.
6. Applicable Dispute
The Policy applies to this dispute. By registering the Disputed Domain Name, the Respondent accepts the Dispute Resolution Policy adopted by the Registrar.
7. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights;
2) That the Respondent has no legitimate rights or interests in respect of the domain name; and
3) That the domain name has been registered and is being used in bad faith.
Identical or Confusing Similarity
The submissions made by the Complainant demonstrate that the Complainant has rights in the trade mark "SIME DARBY" within the meaning of subparagraph 4(a)(i) of the Policy. The Complainant’s ownership of the "SIME DARBY" trade mark in seven countries and the wide business scope of the Sime Darby group of companies support the contention that the relevant Internet-using public would be likely to be confused by the Respondent’s use of the words ‘sime’ and ‘darby’ in the Disputed Domain Name.
The Panel therefore finds that the domain name <simedarby.com> registered by the Respondent is identical or confusingly similar to a trade mark in which the Complainant has rights.
Rights or Legitimate Interests of the Respondent
Paragraph 4(c) of the Policy stipulates how a Respondent can effectively demonstrate rights or interests in the Disputed Domain Name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making a legitimate non-commercial 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."
There is no evidence before the Panel that relates to paragraphs 4(c)(i) or (iii) of the Policy. However, if one Mr. Sim e-Darby is indeed the registered owner of the Disputed Domain Name, he clearly has a right or legitimate interest in the domain name by virtue of subsection 4(c)(ii) of the Policy because the Disputed Domain Name is also his own name.
The Respondent has chosen not to participate in the current proceedings. Subsection 5(e) of the Rules for Uniform Domain Name Dispute Resolution Policy states that:
‘if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint’.
The Complainant has not tendered any evidence to support the submission that Mr. e-Darby is not a natural person.
The complainant in the Skrine proceedings challenged the veracity of Mr. Skrine’s particulars. The panel in that case held that the respondent’s explanations ‘(did) not inspire any credibility and merit non-acceptance’. In this case, the address given for Mr. e-Darby is not a valid Canadian address because the postal code cited in the Registrar Verification provided by Tucows, Inc. is a six-digit sequence of numbers. The Panel notes that Canadian postal address are always formatted in the same sequence: alphabetic character/numeral/alpha/numeral/alpha/numeral (for example the Registrar’s Toronto postal code is M6K 3M1): "http://www.canadapost.ca". Given the history of conduct by My Information and Mr. Woo in the Skrine proceedings and the absence of submissions by the Respondent on this or indeed any point, the Panel is not convinced of the existence of Mr. e-Darby. As such, subsection 4(c)(ii) has no operation in this case and the Respondent accordingly has no legitimate right or interest in the Disputed Domain Name.
The Complainant also has to establish bad faith on the part of the Respondent as set out in paragraph 4(a)(iii) of the Policy. Under paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration…
The Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, held that, for the purposes of paragraph 4(a)(iii) of the Policy, the Complainant needs to establish bad faith both at registration and thereafter. The Disputed Domain Name has variously been registered to My Information, RareDomain WorldWide, Inc. ("RareDomain"), This Domain is 4 Sale, Inc. ("This Domain") and the Respondent. The Complainant submits that My Information and Mr. Woo engage in the business of registering well-known trade and service marks as domain names in order to sell them for a profit. To this end, the Complainant cites sixteen ‘well known entities and/or trade/service marks registered by My Information as domain names’ including Malaysian law firms, publicly listed companies and government bodies. The Complainant further contends that RareDomain and This Domain are merely facades behind which My Information and Mr. Woo hide.
Firstly, Mr. Woo offered to sell the Disputed Domain Name to the Complainant in or about 1999, an act that falls foul of paragraph 4(b)(i) of the Policy. Secondly, RareDomain and This Domain appear to be related entities that share the same electronic address, <mailto:email@example.com>. Thirdly, United States associates for the Complainant’s counsel indicate that the contact details for This Domain are unknown to local authorities and directories; the United States Postal Service returned a cease and desist letter sent by the Complainant’s counsel to This Domain on August 3, 2001, with the comment ‘no such company or person’. Fourthly, the Panel is disinclined on the evidence before it to accept that Mr. e-Darby is a natural person.
The observations of the Panel in Telstra v Ozurls, WIPO Case No. D2001-0046, 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 are relevant in this case. Unless the name of the registrant was Sim e-Darby (an improbable proposition on the facts), the only reason for choosing to register the domain name ‘simedarby.com’ would be to misleadingly suggest some association between the registrant and the Complainant.
In the context of the conduct of Mr. Woo and My Information in the Skrine proceedings and ‘considering all the circumstances of the Respondent’s behaviour’ (see Telstra Corp. v Nuclear Marshmallows), the Panel determines that the Disputed Domain Name was registered and subsequently used in bad faith pursuant to subparagraph 4(b)(i).
In light of the abovementioned findings, the Panel decides:
a) that the <simedarby.com> domain name registered by the Respondent is identical or confusingly similar to the "SIME DARBY" trade mark in which the Complainant has rights;
b) that the Respondent has no rights or legitimate interests in respect of the <simedarby.com> domain name; and
c) that the Respondent’s <simedarby.com> domain name was registered and has subsequently been used ‘in bad faith’.
As such the Panel requires that the registration of the <simedarby.com> domain name be transferred to the Complainant.
Dated: January 22, 2002