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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genting Berhad v. Tan Kim Sin
Case No. DBIZ2002-00071
1. The Parties
The Complainant is Genting Berhad, a company limited by shares incorporated in Malaysia on July 30, 1968, with a registered address at 24th Floor, Wisma Genting, Jalan Sultan Ismail, 50250 Kuala Lumpur, Malaysia.
The Respondent is Tan Kim Sin of 29, Jalan Jingga 2, Taman Pelangi, 80400 Johor Bahru, Johor, Malaysia.
2. The Domain Name and Registrar
The dispute concerns the domain name <genting.biz> ("the said Domain Name") registered with Ascio Technologies Inc. ("the Registrar") of Rejsbygade 8A, DK-1759 Copenhagen V, Denmark.
3. Procedural History
On April 26, 2002, the Complainant submitted a complaint electronically to the WIPO Arbitration and Mediation Center ("the Center") for a decision in accordance with the Start-up Trademark Opposition Policy ("the STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules"). On April 30, 2002, the Center received the hardcopy of the same from the Complainant. On the same day, the Center sent the Acknowledgment of Receipt of Complaint electronically to the Complainant, its authorized representative and the Respondent.
On May 2, 2002, the Center sent a Request for Registrar Verification to the Registrar.
On May 13, 2002, the legal counsel for the Technical Contact of the Respondent, Pernille Borup Petersen, sent an e-mail to the Center to the effect that the said Domain Name was registered via <www.speednames.com>. When searching at <www.speednames.com>, the Panel found that the Registrar of the said Domain Name was Ascio Technologies Inc. and the registrant of the said Domain Name was the Respondent.
On May 21, 2002, the Center found that the Complainant had satisfied the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
On May 22, 2002, the Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures), by facsimile (complaint without attachments) and e-mail (complaint without attachments) to the Respondent and transmitted electronically the complaint to the Complainant and its authorized representative. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification set the formal date of the commencement of this administrative proceeding as May 22, 2002, and required the Respondent to submit a response to the Complainant and the Center within 20 calendar days from the date of receipt of the Notification, i.e. by June 11, 2002, failing which the Respondent would be considered to be in default.
On June 11, 2002, the Respondent transmitted his response to the Center electronically. On the same day, the Center acknowledged receipt of the response by e-mail. On June 13, 2002, the Center received the hardcopy of the same from the Respondent.
After receiving the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Hariram Jayaram on June 17, 2002, the Center appointed him to be the panelist ("the Panel") on June 19, 2002, and sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On June 19, 2002, the Center sent a Transmission of Case File to the Panel.
The Panel finds that the Center has discharged its obligations and responsibilities under the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
In its complaint, the Complainant states that the Genting Group’s history began 35 years ago, when its Founder, Chairman and Chief Executive Tan Sri Lim Goh Tong developed a cool hilltop hotel surrounded by primeval forest and mountainous terrain, which has since grown to become Genting Highlands Resort, the "City of Entertainment" and one of the most popular tourist destinations in Malaysia. It was used as the primary vehicle to spur the growth of the Genting Group to what it has become today. From its initial leisure and hospitality activities, it has since expanded and diversified into other activities including plantations, properties, paper and packaging, power generation, oil and gas, e-commerce and the development of information technology. As at December 31, 2000, the Genting Group had a total of approximately 15,000 employees. On December 28, 1971, it was listed as a public company on the Kuala Lumpur Stock Exchange. In 1989, it was restructured to become principally an investment holding and management company. The Leisure and Hospitality Division is represented by the ever-popular brand names–Genting Highlands Resort, Awana Hotels & Resorts and Star Cruises. Genting Highlands Resort and Awana Hotels and Resorts are owned by Resorts World Bhd, a 55.2% owned public listed company on the Kuala Lumpur Stock Exchange, whereas Star Cruises Limited is a 35.9% owned associated company through Resorts World Bhd. Star Cruises Limited is currently listed on the Stock Exchange of Hong Kong and is the fourth largest cruise line in the world operating a line of 19 ships with over 24,000 lower berths. The combined fleet calls at over 200 ports around the world. The Genting Group’s Plantation Division is headed by its 54.9% owned subsidiary, Asiatic Development Berhad, comprising over 40,000 hectares of plantation land and supported by a 3,000 strong workforce. This subsidiary is a public listed company on the Kuala Lumpur Stock Exchange and is ranked amongst the top five listed plantation companies in terms of market capitalisation. The Property Division of the Genting Group is headed by Asiatic Land Development Sdn Bhd, a wholly-owned subsidiary of Asiatic Development Berhad. Through this company, the Genting Group remains in the forefront of property development, capitalising on land banks which are strategically located in growth areas in Malaysia such as the present 3,200 hectares Indahpura project in Kulai, Johor. In 1994, the Genting Group entered into the paper and packaging business through the acquisition of the entire equity in Genting International Paper Holdings Limited. The company has the largest paper mill in Malaysia using the latest recycling technology. In 1998, the Genting Group entered into the downstream corrugating box industry by acquiring three carton box plants. The full integration of upstream paper manufacturing with downstream corrugated box making has generated positive synergies for the Paper and Packaging Division. With regard to the Power Division, the Genting Group has a 39.1% effective stake in Genting Sanyen Power Sdn Bhd, the third largest Independent Power Producer in Malaysia with a 720 MW power generation plant located in Kuala Langat, Selangor. It may likely be venturing into India and Bangladesh in the near future and will continue to actively seek other power generation projects in the ASEAN region. The Oil and Gas Division which is carried out by the Complainant’s 95%-owned subsidiary, Genting Oil & Gas Limited, carries out exploration and production activities in Indonesia, Australia and China. In 1999, the E-Commerce and IT Development Division of the Genting Group was activated by E-Genting Holdings Sdn Bhd, a wholly-owned subsidiary of the Complainant. Amongst its targets are the use of the website <www.genting.com.my> in the promotion of e-commerce (which has more than 26,000 online members), a Microsoft Enterprise Competency Center, development of leisure and hospitality solutions, the establishment of eGenting leisure centers that are devoted to the promotion of web-lifestyles and the exhibition of state-of-the-art IT devices for the implementation of shared services. Recognition of its commitment and efforts became evident when Genting Information Knowledge Enterprise, a wholly owned subsidiary, was awarded the Multimedia Super Corridor company status. The Genting Group has offices all over Malaysia and overseas including Singapore, Thailand and Hong Kong. The Complainant has a strong financial record. In 2000, the Genting Group’s revenue increased to RM3,338.6 million (approximately USD$878.6 million) which was mainly through the Genting Group’s Leisure and Hospitality Division. The Genting Group has won numerous awards and has been given due recognition for its efforts by well-recognized bodies and publications. They include, inter alia, awards by the Asia Money & Finance, the World Executive’s Digest, Asian Business, Business Week, Asia Inc., Asiaweek, Far Eastern Economic Review, The World Investment Report, Finance Asia, Malaysian Tattler, World Asia Media Holdings (M) Sdn Bhd and Tourism Malaysia Awards. In the year 2000, the Complainant was voted the No.1 leading company in Malaysia for the seventh consecutive year, in the Far Eastern Economic Review’s "Review 200 – Asia’s Leading Companies". It was also recognised as the top Malaysian company in Asian Business’ "Asia’s Most Admired Companies 2000". It has been recorded in the Malaysia Book of Records where it has won several distinctions such as having the first monorail, the first motion simulator, the first 3-D theatre, the most number of roller coasters, the most number of rooms, the longest cable car system, the fastest mono cable car system, the first power plant to achieve the Malaysian Society for Occupational Safety and Health Gold Award and Grand Award and the longest Yow Char Kwai (a deep fried dough delicacy). The Genting Highlands Resort ("the Resort") comprises 5 hotels at the hilltop with a total 5,085 room capacity. These hotels include the Genting Hotel, Highlands Hotel, Resort Hotel, Theme Park and the First World Hotel. The Resort has a total of 33 food and beverage outlets. In 1999 and 2000, despite the economic downturn, the resort attracted approximately 12 million and 13.4 million visitors respectively, comprising both local and foreign visitors. Foreign visitors accounted for more than 50%. Apart from lodging and dining, the range of activities within the Resort are varied. The variety extends to both indoor and outdoor entertainment. For indoor entertainment, the Resort holds inter alia spectacular concerts and variety shows at the 6,000 seat "Arena of the Stars" where local and international artistes perform. The 1,800 seat "Genting International Showroom" provides multi-million ringgit productions to visitors of the Resort where past performances include "Jim Brickman Live in Malaysia", "International Indian Film Academy Awards 2002", "Magic on Ice" (the first ever multi-million-ringgit Ice Skating Magic on Ice in Asia), "Odyssey" and "Odyssey 2" (magical performances featuring prominent artistes). "Studio 98" consists of a state-of-the-art two tier discotheque with a floor space of 18,105 square feet which allows patrons to enjoy music at its best. The famous "Casino de Genting", the sole licensed casino in Malaysia since 1971 offers international games and entertainment. For outdoor entertainment the list is endless. The "Genting Theme Park" ("the Park") (which provides both indoor and outdoor activities) offers roller-coaster and other forms of rides, 3-D experiences, virtual games and amusement arcade games. The Park was duly credited as one of the "Best Man Made Tourist Attraction" by the Malaysian Tourism Board in 1997. Visitors can enjoy golf, horseback-riding, jungle-trekking, mountain-biking, abseiling, rock-climbing, camping, nature walks and much more at the Awana Genting Highlands Golf and Country Resort which is located slightly below the hilltop. In carrying out its trade and business activities, it uses, whether by itself or through the Genting Group, inter alia the trademark and/or service mark "GENTING" ("the Complainant’s trademark and/or service mark"). The Complainant’s trademark and/or service mark appears, amongst others, on all or most of its advertisements, promotional materials, buildings, sponsored premises, websites, sponsored events, properties, offices, signages, billboards, pamphlets, packaging material, gaming chips, costumes, uniforms and stationery. The Complainant’s trademark and/or service mark is used in a manner so as to maximise exposure of the same to the public at large. Considerable amounts of monies have been expended to promote and to create the appropriate awareness in the Complainant’s trademark and/or service mark both locally and internationally. From 1998 to 2001, approximately RM49.2million (approximately USD$13million) was incurred as marketing expenses for the Resort. In protecting and preserving its rights to the Complainant’s trademark and/or service mark, it and its associated companies have made several trade mark applications and have procured registrations in Malaysia and other jurisdictions. The registrations procured in Australia were made through its associated company viz. Genting International Management Ltd, a corporation formed under the laws of the Isle of Man. The applications and registrations are described in detail in the complaint.
It owns and operates the Internet website located at <www.genting.com.my> ("the website"). The website contains graphic and textual information on the activities, goods and services offered by the Genting Group as well as general information, current news and online games that appeal to the public at large. The primary aim of the website is to become a one-stop leisure and hospitality portal. Most of the facts and information stated in the complaint can be located at the website. Since March 17, 1997, the website can be accessed worldwide. As at April 22, 2002, it was recorded that 1,586,957 webpages of the website had been viewed averaging approximately 75,569 webpages per day. In Genting Berhad v. Genting Casino, Inc, WIPO Case No. D2001-1192, the panelist has acknowledged it as "a famous company with long history and numerous business sectors and it has gained due recognition in some countries especially in Malaysia".
In his response, the Respondent states that to understand his intention of filing IP Claims and registration of the said Domain Name, the history of <genting.com> should be considered. In September 1998, he had registered <genting.com> under his name with Network Solutions. The Complainant filed a complaint with National Arbitration Forum against him as the registrant of the domain name <genting.com>. The verdict of the panelists of National Arbitration Forum was in his favor and he retained <genting.com>. Correspondences between the Complainant and National Arbitration Forum revealed that it had the intention of pursuing the case in a court of law after its unsuccessful attempt in the administrative proceeding. In 2001, new Top Level Domain (TLD) names were introduced by ICANN. On July 19, 2000, the Respondent submitted an IP Claim for the said Domain Name because:
- he was prepared to carry out his business plan of providing diving services by the end of 2002 or early 2003. The location of the intended diving center was Genting Village in Tioman Island. The name of the locality, Genting, is identical to the said Domain Name;
- as the legitimate owner of <genting.com>, he had all the reasons to secure the said Domain Name in order to maintain consistency; and
- the incident of the administrative proceeding for <genting.com> initiated by the Complainant and its intention to initiate a lawsuit against him after the administrative proceeding made him feel the threat of hassle in confronting the Complainant again in a legal suit. This caused him to have a defensive state of mind. If he failed to submit the IP Claim for the said Domain Name, the Complainant could capitalize on it and use it as evidence against him to establish that he has no legitimate rights in <genting.com>.
On April 6, 2002, Nuelevel, the Registry Operator of the .BIZ gTLD, notified him of his successful registration of the said Domain Name. After completing an Open Water Diving course in Tioman Island, in April 1998, he entered into a business start-up plan with a diving instructor Zulkifli Bin Sulaiman (PADI Instructor) of B&J Diving Center in Salang Village in Tioman Island. Business preparations carried out included the following: -
- business evaluation and market survey;
- identifying a suitable site in Tioman Island for open-water dive shop;
- locating a suitable site in Johor Bahru for a marketing office;
- sourcing for a suitable swimming pool in Johor Bahru for confined water courses;
- sourcing and negotiating for diving equipment purchases; and
- sourcing the service provider for air-compressors.
Tioman Island is one of the 10 most beautiful islands and one of the most popular diving spots in the world. Many leisure divers are from Europe, Japan, the United States and Singapore. Very few Johor Bahru residents are divers at Tioman Island. The business evaluation indicated a huge market potential in Johor Bahru. For a population of 800,000 there was no active diving service provider. The market was virgin and passive to the diving sport and it had to be diving educated. The Respondent’s internal market studies revealed that, with pro-active marketing in promotions, advertisements, road shows, seminars and lectures, diving course packages can be organized for factories, companies, colleges and government sectors. Overseas dive packages and walk-in customers can be an important source of business revenue with proper website linking and affiliation with worldwide diving organizations and travel agencies. Based on his calculations, the Respondent’s anticipated yearly operation profit would be RM760,000 (about USD200,000) from the Johor Bahru market alone. This was attractive when compared to an estimated start-up cost of RM75,000 (about USD20,000). If this administrative proceeding is challenged in a court of law, there are witnesses who can attest to his business preparations in 1998, and they included business operators, the residents of Salang Village in Tioman Island, Johor Bahru, logistic and swimming pool providers, Singapore equipment providers and his diving instructor partner. Pending the procurement of funds as capital, he decided to establish a dive shop at Kampung Genting (Genting Village) in September 1998 because:
- it was the first stop for travellers transiting between the Tioman Island and the mainland by sea;
- it had only one existing dive shop i.e. the Scubashop Diving Services, whose customers were mainly from tour packages from Singapore and who did not focus on walk-in customers; and
- business competition in Genting Village was very mild when compared to other places such as Salang Village, which had 4 diving shops.
<genting.com> was registered based on the decision as to the proposed business locality. The business of diving services was not able to commence immediately owing to the delay in obtaining capital during the period of the Asian Financial Crisis. In May 1999, he decided to test the diving market by initiating a diving package agency for the diving shop operators in Tioman Island. He had approached several diving shop operators in Tioman Island including Christofer Lee of Scubashop Diving Services in Genting Village, Kane of Bali Hai in Panuba Village and Jean Claude of B&J Diving Center in Salang Village. The initial marketing strategy was to focus on the Internet media by setting up a diving services website ("the website"). He registered the business name Genting Diving Discoveries after foreseeing its need for business transactions. As the targeted customers for the website were leisure divers from Europe, he registered the website with the major search engines including Yahoo, Infoseek and Lycos hoping to expand and expose his business further. The response for the diving services on the website was extremely slow. Without advertisements or pro-active marketing, the diving agency was not actively concluding diving packages from the local market and overseas. He did receive ad-hoc enquiries but overall, his business was not fruitful. However, even though the agency business was not prosperous, it was good to gauge the efficiency of Internet media by maintaining the website pending the commencement of his own diving center services. After maintaining Web Pages Version 1 for 33 months, he decided to change the website to Web Pages Version 2 in January 2000. The layout was simplified to display only the proposed new logo and hide the contents of the other pages for many reasons: He had received several comments from the visitors of the website that the web design was inferior in quality. He decided to revamp the web design and his Internet marketing strategies since the diving agency service was not fruitful and his own diving center services were yet to commence. The new design is expected to be launched towards the end of 2002. He wanted to maintain a continuity of presence on the world wide web until the new website contents were introduced, when his own diving services commenced.
The Web Pages Version 1 was renamed from ‘index.htm’ to ‘index2.htm’ and the main page of Web Pages Version 2 was named ‘index.htm’. ‘Index.htm’ is a common default page that starts when a visitor to a website enters only the Domain Name in the browser without web page name. In August 2001, Web Pages Version 2 was tested for a few days and on January 17, 2002, it was commenced on temporary basis.
5. Parties’ Contentions
The Complainant contends that the said Domain Name, which is registered in the name of the Respondent, uses the distinctive word and/or name "GENTING" and is identical to the Complainant’s trademark and/or service mark in which it has rights. The said Domain Name wholly incorporates the Complainant’s trademark and/or service mark as its second level domain. Without representation by legal advisors at the material time, it had previously initiated proceedings via Genting Berhad v. Tan Kim Sin, NAF FA0005000094735 against the Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP") by filing a complaint with National Arbitration Forum on May 22, 2000, to seek a transfer of <genting.com>. On the facts presented in that proceeding, the panel found in favour of the Respondent. In this proceeding, the Complainant has discovered further facts and legal representation has been sought. In the previous proceeding, the Respondent contended that he was the sole proprietor of Genting Diving Discoveries, a business organised under the laws of Malaysia and having an address at No.29, Jalan Jingga Dua, Taman Pelangi, Johor Bahru, 80400 Johor, Malaysia. He was a qualified diver and his diving center was supposedly based in a village in Tioman Island known as Kampung Genting ("Genting Village"). His marketing strategy included website publishing and hence the reasons for securing <genting.com>. The opening of the dive center was projected for the last quarter of 2000, provided that he obtained operating funds. There are numerous other business and company registrations that bear the word ‘Genting’. The word ‘genting’ is a Malay word in ordinary use. The Complainant avers that the Respondent does not have any rights or legitimate interests in the said Domain Name. The said Domain Name is not registered in the name of the Respondent’s registered business but is in fact registered by the Respondent in his personal capacity. The Respondent’s name, Tan Kim Sin, bears no resemblance to the said Domain Name. The said Domain Name bears no real resemblance to the Respondent’s registered business name, ‘Genting Diving Discoveries’. Rights or legitimate interests, if at all, would be in respect of ‘Genting Diving Discoveries’ and not ‘Genting’ per se. The said Domain Name and the supposedly intended website do not use the word <genting> in its geographical sense. The supposed website was never intended to refer to Genting Village. If it was intended to refer to Genting Village, the appropriate domain name would have been <gentingvillage.com> and it would have further contained matters descriptive of Genting Village. The Respondent does not use the word ‘genting’ in the sense used in the Malay language. The word ‘genting’ in the Malay language bears the meaning "narrow or small in the middle, slender; pass, narrow way over or through mountains or hills; tile, square or oblong plate of baked clay for covering roofs". The context would appear that the word is used in a distinctive trademark sense rather than descriptive. Although there are numerous other business and company registrations that bear the word ‘Genting’, these registrations rely on further descriptive (or distinctive) extensions to the name. Even the Respondent’s name uses the extension ‘Diving Discoveries’. The Complainant is the only company that enjoys exclusivity to the registration of the name ‘genting’ on its own. The website located at <genting.com> merely contains the words ‘GENTING DIVING DISCOVERIES’ in medium sized fonts and "Enquiry" against a dull green background. When the cursor is clicked on the word "Enquiry", an e-mail can be sent to <firstname.lastname@example.org>. Apart from these matters, there is nothing on the website to indicate that the Respondent is actually running a diving business in Genting Village, on the island of Tioman in Malaysia. The domain name does not have a <.my> country code extension that would indicate that the business operates from Malaysia, there is no corporate information and there is no information relating to the Respondent’s business. He does not and has never operated a diving business known as "Genting Diving Discoveries" whether from Genting Village or from his purported ‘business’ address. The Complainant has commissioned an investigation into the purported activities of the Respondent. It can be gathered that the Respondent does not have any rights to and/or any legitimate interests in the said Domain Name except to:
- resell, rent or otherwise transfer the said Domain Name registration to the Complainant or to any of its competitors, whosoever they may be, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the said Domain Name;
- prevent the Complainant from reflecting the trademark or service mark in a corresponding domain name;
- misappropriate and ride on the Complainant’s goodwill and reputation through the use of the said Domain Name;
- hold the Complainant at ransom under the threat of passing off or the likelihood thereof;
- dilute the distinctiveness of the Complainant’s trademark and/or service mark; and/or
- unlawfully interfere with the Complainant’s trade and business and/or economic interests.
The Respondent’s success in the previous proceeding in relation to <genting.com> is not a decisive factor when considering the element of bad faith. The Complainant was not advised by solicitors in that proceeding and in this instance, further facts have been discovered. The Complainant’s trademark and/or service mark is a well-known mark in Malaysia and internationally. When reference is made to the word ‘genting’ on its own, the Malaysian public would necessarily draw the assumption that reference is being made to the Complainant and/or the Genting Group. The word ‘genting’, when referred to on its own, is distinctive of the Complainant and no other. Being a Malaysian or a Malaysian resident, the Respondent has knowledge of the Complainant’s rights, interests, reputation and goodwill in the Complainant’s trademark and/or service mark but yet chose to proceed with the registration of the said Domain Name, in the manner in which it was registered. This assertion is re-enforced by the fact that the Complainant had filed at least four IP Claims with the NeuLevel .biz Registry. These IP Claims were brought to the attention of every applicant of the said Domain Name including the Respondent. The Respondent filed an IP Claim with regard to his purported ownership of the trademark or service mark ‘genting’. The Complainant submits that the Respondent had filed this assertion to ownership fraudulently as he has never used the mark "genting", whether in commerce or otherwise. In the previous proceeding, the Respondent asserted that he intended to use <genting.com> for its Internet presence, once financing was obtained. As will be noted, the domain name was first registered in September 24, 1998. It has been almost 4 years since the domain name was first registered but yet all that has been done with the domain name is the creation of the passive website. In the circumstances, it cannot be argued that the Respondent registered, intended to use or uses <genting.com> or the said Domain Name, in connection with a bona fide offering of goods or services. The website, as created by the Respondent, serves no real purpose from a commercial or non-commercial point of view. Neither the browser nor the Respondent stands to gain from this website. The browser will leave without any knowledge as to the nature of the business or the information sought to be adduced by the Respondent, the locality of the business or the contact details. As such, it is averred that such a website should be regarded as a passive or inactive website. In Petroliam Nasional Berhad (PETRONAS) v. Daniela Naidu, WIPO Case No. D2000-1777, the panelist took this factor into account when determining bad faith especially since the mark involved was a reputable and well-known mark. The issue of funding, if raised, ought not to be taken into account. If the Respondent was sincere in his intentions to create an Internet presence for his business, he could have easily done so by creating a genuine website using one of the many free website services offered on the Internet such as <www.geocities.com>. He could then have <genting.com> forwarded to his free website. This procedure is known as domain forwarding. It is affordable and very common. He has attempted to disguise bad faith on his part or to defeat actions that may be brought against him by setting up a passive website and by not making a direct offer to sell the said Domain Name to the Complainant. The Panel ought to take cognizance of the fact that cybersquatters are increasingly more knowledgeable than before on laws relating to domain names and in many instances, they have taken active steps to disguise bad faith on their part and this is one such instance. Although the Respondent has registered the business under the name of "Genting Diving Discoveries", he does not or has never operated a business, whether related to diving or otherwise, under the said name. On April 19, 2002, the Complainant commissioned Pinkerton Consulting (M) Sdn Bhd ("Pinkerton"), the Malaysian branch of the reputable international investigation firm, to ascertain whether the Respondent carried on a diving business under the name ‘Genting Diving Discoveries’. For this purpose, it forwarded to Pinkerton a copy of the business search results on Genting Diving Discoveries. The following findings are evident from the investigation report:
- Informal interviews with the local villagers of Genting Village revealed that there was only one diving establishment, a scuba shop by the name of "Simply Scuba", in Genting Village;
- The villagers replied that they had never heard of an establishment known as "Genting Diving Discoveries";
- A survey of Genting Village confirmed that "Simply Scuba" was the only diving establishment located in Genting Village;
- An informal interview with an employee of "Simply Scuba", a local of the island and assumedly experienced in the diving industry on the island, revealed that he had never heard of "Genting Diving Discoveries";
- Observations carried out on the Respondent’s purported address, namely No.29 Jalan Jingga Dua, Taman Pelangi, Johor Bahru, proved that the premises was purely for residential purposes. A pretext visit to the premises revealed that the house was owned by Mr. Ng (and not Mr. Tan). It was confirmed from the visit that no business operated from the house.
The Respondent knew or should have known of the registration and usage of the Complainant’s trademark and/or service mark prior to his registration of the said Domain Name. He has intentionally attempted to attract, for commercial gain, Internet users to his website <genting.biz>, by creating a likelihood of confusion with the Complainant’s trademark and/or service mark so as to misrepresent to the public as to the location of the Complainant’s authentic website and/or that Complainant had endorsed his website and/or products or services provided therein. The Complainant refers to SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport NAF Proceeding No. FA0006000094956 to support its contention of bad faith. By registering the said Domain Name, the Respondent intends to create ‘initial interest confusion’ amongst members of the public. By securing the registration of the said Domain Name, the Complainant hopes to increase the possibilities of ‘initial interest confusion’. The fact that the e-mails were subsequently forwarded to the Complainant does not absolve the Respondent of its unlawful actions. In Estée Lauder Inc. v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, the panelist held that "the fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion". In this case, the Respondent has not taken any steps to avert this confusion such as placing appropriate disclaimers within the passive website. As the Complainant does not exercise any control over the said Domain Name, it is unsure whether there have been other unreported instances. It views the confusion that has arisen with great concern. The acts and the conduct of the Respondent deceive and mislead or are calculated to deceive and mislead or are likely to deceive and mislead the trade and public into an erroneous belief that the said Domain Name registered by the Respondent is that of the Complainant or is otherwise howsoever associated, affiliated or connected with it and/or the Genting Group. He has adopted the said Domain Name in an attempt to trade on the reputation and goodwill of the Complainant. He must have anticipated and intended to benefit from the confusion that was likely to arise from the goodwill and reputation of the Complainant’s trademark and/or service mark. His acts and conduct deceive and mislead or are calculated to deceive and mislead or are likely to deceive and mislead the trade and public into an erroneous belief that the said Domain Name is owned by an entity that is named GENTING or is somehow connected, associated or related to an entity which owns the name or mark GENTING. His actions and conduct have deprived the Complainant of the right and opportunity to have a domain name comprising its own name, which is international in character. This amounts to a loss of competitive advantage and loss of identity in the information superhighway. His actions and conduct leave an instrument of deception that may be used to perpetrate a wrong at law. If he is allowed to continue to activate, use or deal with the said Domain Name, this would result in a false association of the said Domain Name with the Complainant and/or the Genting Group. His actions and conduct will cause a dilution of the Complainant’s trademark and/or service mark and hence lead to a devaluation of the goodwill and reputation residing therein. The disputed said Domain Name is intended to be used for commercial purposes, as is evidenced by the first-level domain <.biz>. The Respondent is using the Complainant’s trademark and/or service mark after it has become famous or well-known. The said Domain Name will have the effect of diluting the Complainant’s rights as the identifying owner of the famous or well-known mark. The Respondent, by using the said Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark and/or service mark as to the source, sponsorship, affiliation or endorsement of his website, within the meaning of paragraph 4(b)(iv) of the Policy. He has passed off or attempted to pass off or is likely to pass off the said Domain Name not being the domain name of the Complainant and/or the Genting Group and has enabled such passing off as and for the domain name of the Complainant and/or the Genting Group . He has passed off or attempted to pass off or is likely to pass off his trade and business or the trade and business of any third party as being connected or associated howsoever with the Complainant’s and/or the Genting Group’s trade and business through the use of the said Domain Name. His acts constitute trademark infringements of the Complainant’s registered trademarks in Malaysia, Singapore, Brunei and Australia and constitute an unlawful interference with the trade and business and/or economic interests of the Complainant. Based on inter alia the matters mentioned above, the Complainant states that the said Domain Name was registered or is being used by the Respondent in bad faith.
The Respondent contends that in the administrative proceeding for <genting.com>, the panelists agreed that the domain name "was identical or confusingly similar to trademarks in which the Complainant has rights". However, he maintains the contention that the Complainant’s trademark is a device mark of a graphical pattern Genting as shown on the registration, rather than the word ‘genting’ itself. The said Domain Name is registered in connection with <genting.com> and ‘Genting Diving Discoveries’, which are wholly owned by him. Under STOP 4(c)(ii) "…a name corresponding to the domain name in connection with a bona fide offering of goods or services…" explicitly implies that a name the domain name corresponds to can be the brand of a product or services. In this instance, it is his business name, belonging to him. STOP or any other policies set by ICANN do not require that a domain name must be directly identical with the name of the registrant. The Complainant’s allegation is groundless.
Registering a domain name in his personal capacity gives him full control over the said Domain Name when shares of business ownership are allocated to partners like diving instructors in the future. In addition, the Business Registry of the Local Council allows multiple registration of a similar business name subject to a certain minimum distance between sites of businesses carrying similar name. ‘Genting Diving Discoveries’ can be registered and used by many parties at the same time, but an Internet domain name can only be registered by a single registrant on first come first served basis. There has been no naming convention of such or any kind set by ICANN or the Registrars to determine legitimate interests and as such he congratulates the Complainant for setting a new guideline. The Complainant, in its own effort to create a measurement of standard as to the component words of a domain name which corresponds to a business name, has overlooked the efficiency of a domain name in terms of generic representation and length. Based on general market acceptance, a good domain name must be brief, reflective of the registrant’s business name or general brand of products commonly known to others, and generic in the scope of business or products coverage. A domain name with excessive length, which becomes restrictive owing to an attempt to bundle each and every word in the business name, is considered lousy. In this instance, the Respondent chose to use ‘genting’ for the Internet brand name as it is brief, reflective of the locality commonly known as ‘Genting’ in the local society and not ‘Genting Village’ in fuller words, and generic in representation when his business, apart from diving services, expands into other businesses in the locality. The said Domain Name is already reflective of Genting Village in its geographical sense. The additional word of ‘village’, ‘city’ or ‘state’ in a brand name can be redundant and unnecessary. The allegation of the Complainant with this naming standard contradicts with its own website domain name <genting.com.my>. Its website’s homepage is not intended for its corporate main menu. Instead, the main content of the main page is related to news, leisure and entertainment activities and accommodation services for the Resort in the Genting Highland locality. If based on its new naming standard, its website’s URL should be <gentinghighlandresort.com.my> or <gentinghighland.com.my>, instead of otherwise. The Respondent agrees that the Complainant enjoys exclusivity of the registration of the name ‘genting’ on its own amongst other companies. However, on the platform of locality naming, Genting Highland does not enjoy exclusivity to the word ‘genting’ on its own but Genting Village does. The current web page is under Version 2 whereby the complete design has not taken shape. When completed, the website will contain detailed information on the Respondent’s diving services and locality. The dive shop will be constructed only when the operation for the business is commenced. The Complainant has stated that "the said Domain Name was registered or used in bad faith". The Respondent contends that the said caption should be "The domain name was registered in bad faith" with exclusion of the phrase "or used" since it was impossible for him to use the said Domain Name at the time of IP Claim submission for which the STOP applied. He has demonstrated that <genting.com> is one of the decisive factors that led to the registration of the said Domain Name. If the Complainant wishes to prove that the said Domain Name was registered in bad faith by the Respondent, it must also prove that <genting.com> was registered or used in bad faith. The 3-member panel in Genting Berhad v. Tan Kim Sin, NAF FA0005000094735 have ruled that there was no element of bad faith on the Respondent’s part. The Complainant has had no exclusive use of the name ‘Genting’ in Malaysia since there are over 200 companies carrying the word ‘Genting’ in their names registered with the Registrar of Companies, Malaysia. In terms of locality name, the Respondent has no objection to the Complainant’s statement if the residents and visitors of Tioman Island are excluded. In Tioman Island ‘genting’ does not refer to Genting Group or Genting Highland Resort but to Genting Village. Being a Malaysian, the Respondent has good knowledge of the reputation of the Genting Group and the Resort. However, being the legitimate owner of <genting.com> he has equally good knowledge of his rights in the said Domain Name. This allegation is more applicable to other Malaysians who could have submitted an IP Claim and have it registered, if the Complainant really thinks that this allegation can stand. The Web Pages Version 1, consisting of a home page with a running marquee "Explore the underwater world of Tioman Island" and hyperlinks to web pages having introductory information on Tioman Island, Tioman life style, Getting There, Accommodation, S.C.U.B.A., Dive Courses and Dive Packages, has been in operation since May 1999. It was replaced by Web Pages Version 2, a simplified page, on January 17, 2002. The activeness of Web Pages Version 1 may be seen from the following:
- e-mails by the visitors to Web Pages Version 1 website containing ad-hoc inquiries for the diving packages in Tioman Island;
- Web Pages Version 1 was hosted by a web-hosting company known as IMC Online for the period May 1999 to July 2001 for 27 months. The company’s services have been terminated but if the Complainant wishes to challenge this evidence, it or the Respondent could request the company to confirm the contents of <www.genting.com> which resides in the company’s web servers. The current web server hosted Web Pages Version 1 from August 2001 and Version 2 from January 2002 until now;
- the Complainant’s employees have visited the <www.genting.com> website during the 33 months’ period of Web Pages Version 1. According to Respondent’s information sources, after the administrative proceeding for <genting.com>, the Complainant had been closely ‘monitoring’ the activity of the Respondent’s website. The Complaint submitted by the Complainant in the administrative proceeding for <genting.com> verified that its representatives had submitted e-mail inquiries to the Respondent on the diving services in January and March 2000;
- In the previous administrative proceeding for <genting.com> the Web Pages Version 1 of website <www.genting.com> was the subject of the proceeding. Even though the contents of the website were not documented in either the Complaint or Response, all parties to the administrative proceeding were witnesses to Web Pages Version 1.
Other witnesses of Web Pages Version 1 from the web page designers and numerous business counterparts and associates of the Respondent can be quoted if the case is challenged in court. The Complainant has stated that "… the domain name was first registered in 24 September 1998. It has been almost 4 years since the domain name was first registered but yet ALL THAT HAS BEEN DONE with the domain name is the creation of the passive website…". It is aware of and has visited the Web Pages Version 1 during the 33 months operation period of the same. It has now attempted to deceive the Panel to believe that the Respondent has been acting in bad faith by posting a passive website during these 4 years. The same fraudulent allegation has been applied in the complaint, accusing the Respondent of acting in bad faith. The setting-up of a dive shop at Genting Village was subject to the Respondent obtaining capital. Before the commencement of construction work for the dive shop, the business plans were kept confidential. He would be surprised if competing dive shops come to know of his dive shop business plans. He strongly contests the suggestion by the Complainant that the house does not belong to him. This can lead the parties to this administrative proceeding into thinking that he has either reported a false address with the Business Registrar or the Registrar, or that he does not own the property known as 29, Jalan Jingga 2, Taman Pelangi Johor Bahru. He asserts that he is the legal proprietor of the property. The Complainant should not have reported its suspicion on the ownership of property in such manner before carrying out a land title search with the Government Land Office. If the Complainant could recall, in the previous administrative proceeding, the Respondent had mentioned that the business name ‘Genting Diving Discoveries’ was registered to commence marketing on a preliminary basis prior to the Respondent obtaining capital. As the proper marketing office had not been set up, the business was registered using his residential address. The targeted customers for his diving services via Internet media are leisure divers in Europe. Aside from reflecting a tropical character and a unique brand for his services, the name Genting does not give him any commercial advantage because the name is not well known in Europe. His marketing strategies for the Malaysian market never included the Internet media since the local market for diving industry is passive. Any contention that the said Domain Name is used by the him with the intention to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark is groundless. In the past 4 years, there is no sign in the logo, design, layout, color scheme, context, content or heading of a confusing nature in his website which is similar to the Complainant’s website to mislead the general public in order to attract "initial interest confusion". He has not received a single complaint from either the general public or the Complainant as to the confusion of his website or the absence of disclaimers on the website. If the Complainant has great concerns on the possible confusion of interest, it could make an official request to him for a disclaimer tag on his website. On March 17, 1997, the Complainant commenced its web portal at <www.genting.com.my> and since then, huge investment costs have been spent in developing and promoting the website. In contrast, the Respondent only registered the domain name <genting.com> in September 1998, one and a half years after the Complainant commenced its website. The Respondent did not purchase <genting.com> from a third party. At the time of his domain name registration at Network Solutions, Inc. <genting.com> was available and open to the public. In May 1999, the Complainant registered <e-genting.com> under the name Resorts World Berhad. This contradicts its own contention pertaining to the domain name and registrant name in the complaint. An alternate web identification was launched for its website. The Complainant only started to indicate its interest in <genting.com> to the Respondent by a ‘friendly’ correspondence copy of its complaint filed for the first administrative proceeding on May 22, 2000. Now it claims that the Respondent has deprived it of the right and opportunity to have a domain name comprising its own name. It is hard to believe that after investing millions of dollars in <www.genting.com.my> and <www.egenting.com>, it suddenly complains that it is having shortage of name representation. The Respondent asserts that the registration of <genting.com> in 1998 was not an action to deprive the Complainant or other companies from carrying a similar name. The said Domain Name was registered on the grounds referred to as the decisive factors previously and with no other intention of any kind. As per STOP para 4 the Complainant must prove that all the following three elements are present:
- The domain name in question is identical to a trademark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name in question; and
- The domain name in question has been registered or is being used in bad faith.
None of the above elements is present. The Complainant’s trademark is a device mark for the graphical pattern Genting as shown on the trademark Certificates, rather than the word ‘genting’ itself. As such, the seven letters ‘genting’ in its plain text form do not have EXACT similarities with the trademark or service mark in which the Complainant has rights. The Respondent has all the rights and legitimate interests in the said Domain Name based on the following grounds:
- The said Domain Name is registered in continuation to <genting.com> in which he has rights;
- Prior to the IP Claim submission for the said Domain Name, the Respondent had carried out business preparations for his diving center services. Business activities of a diving package agency were also carried out at <www.genting.com> prior to the setting-up of his own diving facilities. Business commencement for his own diving center services is scheduled to start by the end of 2002 or early 2003;
- The said Domain Name is registered to correspond to the locality commonly known as Genting in Tioman Island where he planned to locate the dive center.
There is no evidence of any kind to prove the presence of bad faith. The registration of the said Domain Name is mainly due to the decisive factors of his business plans and <genting.com>, without any deliberate intention of preventing the Complainant or other companies carrying a similar name from reflecting their mark in a domain name. The nature of businesses between the Complainant and the Respondent has no similarity or conflict whatsoever locally, regionally or internationally. There is no similarity of any kind in any aspect between the design presentation of the Respondent’s website and the Complainant’s website. There is no similarity whatsoever between the Complainant’s trademark logo and the Respondent’s logo. The Internet media marketing is targeted on leisure divers in Europe and overseas for the Respondent’s diving services. Aside from reflecting a tropical characteristic and a unique brand for his services, the name Genting does not give the Respondent any commercial advantage because the name is not well known to the leisure divers in Europe and overseas. No evidence has been provided to prove the presence of any of the above circumstances and as such the Complainant’s allegation that he has registered and used the said Domain Name in bad faith is completely groundless.
6. Discussion and Findings
The STOP requires the Complainant to prove the following elements in order to succeed against the Respondent:
i) The said Domain Name is identical to a trademark or service mark in which it has rights; and
ii) The Respondent has no rights or legitimate interests in the said Domain Name; and
iii) It has been registered or is being used in bad faith by the Respondent.
The Panel notes that the Complainant has registered the trademark and/or service mark "Genting" ("the said mark") in Malaysia, Singapore, Brunei and Australia. It has also made long and substantial use of the said mark thereby acquiring goodwill and reputation in the same. It has therefore rights in the said mark.
In view of the wording of STOP, the Complainant must show that the said Domain Name is identical to the said mark. The Respondent argues that the Complainant’s mark is in stylised form in the certificates of registration ("the said certificates") and the lettering is different from the plain lettering of the word "genting" to be found in the second level domain; Being not exactly the same as the second level domain, the said mark should not be regarded as identical. The Panel cannot accept such a restrictive meaning to be given to the word "identical". Every letter in the word "Genting" being the same, in the said certificates and the second level domain, the Panel finds that the said Domain Name is identical to the said mark.
However, as mentioned by the Complainant, the dictionary meaning of the word "genting" in the Malay language is "narrow or small in the middle, slender; pass, narrow way over or through mountains or hills; tile, square or oblong plate of baked clay for covering roofs".
There are also localities in Malaysia bearing this name.
There is no doubt that the Complainant is a reputable and well known company in Malaysia. The panelist in Genting Berhad v Genting Casino, Inc, WIPO Case No. D2001-1192 acknowledged that the Complainant was "a famous company with long history and numerous business sectors and it has gained due recognition in some countries especially in Malaysia". In this administrative proceeding, the Panel sees no reason to disagree with this observation about the Complainant. However, a careful examination of the said certificates reveals that the Complainant has registrations for the said mark in several classes for many goods and services but none explicitly for the services of a diving center.
The Respondent, on the other hand, is the sole proprietor of Genting Diving Discoveries, 29, Jalan Jingga 2, Taman Pelangi 80400, Johor Bahru, Johor Darul Takzim, Malaysia. He plans to start the business of a diving center at Genting Village in Tioman Island and has made preparations for the same. He has registered the said Domain Name since it is reflective of the location as well as the name of his business entity. The said Domain Name is additional to the domain name <genting.com> in which he has rights, as decided by the panelists in Genting Berhad v. Tan Kim Sin, FA0005000094735. He has established a website using the <genting.com> domain name, as part of his Internet marketing strategy to attract overseas customers but he is unable to commence his business as yet because he is short of funds.
When a geographical name is adopted as a trademark, it carries with it some limitations. The name itself is descriptive. The trademark registrant should bear in mind that an entity other that itself may have a legitimate right to the use of the same geographical name provided that this other entity is able to show a connection between its business activity and the geographical location. No monopoly may be given to any entity for the use of the geographical name if that other entity is engaged in a different field of activity and this activity has nexus with that location.
It is the view of the Panel that by reason of the above, the Respondent has rights and legitimate interests in the said Domain Name and there is no element of bad faith on his part in securing its registration for its intended use in connection with his business activities.
The Panel finds that the Respondent has rights and legitimate interests in the domain name <genting.biz>. The complaint is hereby dismissed.
Dated: July 3, 2002