Genting Berhad v. Tan Kim Sin
[Indexed as: Berhad v. Sin]
[Indexed as: genting.com]
National Arbitration Forum
Case No. FA0005000094735
Commenced: 22 May 2000
Judgement: 28 June 2000
Presiding Panelist: Harold Kalina
Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Legitimate rights - Bad faith.
Complainant has the trademark GENTING registered or pending application. Respondent registered the domain name genting.com. Complainant was incorporated in 1968 and has been using the trademark since then in Malaysia, Singapore, Brunei Darussalam and Hong Kong. Respondent registered its diving business, to be based at one of Tioman Island villages known as Kampung Genting (Genting Village) in 1998, and registered the domain name as part of its business strategy.
Held, Name Not Transferred.
Respondent claims that the name GENTING is generic and Complainant thus does not have exclusive right to the name. However, the Panel finds that the name is identical or confusingly similar to Complainant's mark.
Prior to notice of this dispute, Respondent had been preparing to use the name in connection with a bona fide offering of goods and services. Thus, Respondent has demonstrated that it has legitimate rights to the name.
Respondent's purpose for registration was not for resale of the name for an amount greater than out-of-pocket expenses, nor did Respondent engage in a pattern of cyber-squatting. Respondent has not intentionally disrupted Complainant's business or intentionally create confusion with Complainant's mark. In addition, Respondent's business is not similar to that of Complainant's. Therefore, Respondent did not register or use the name in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Kalina, Panelist: -
Domain Name(s): "GENTING.COM"
Domain Name Registrar: Network Solutions, Inc.
Date of domain name registration: 09/24/98
Date Complaint was sent to Respondent in accordance with Rule 2(a):
Response Due Date: 06/12/00
Response Date: 06/6/00
On May 22, 2000, the Complainant, Genting Berhad, filed its complaint with the
National Arbitration Forum ("The Forum") pursuant to the Uniform Domain Name
Dispute Resolution Policy adopted by the Internet Corporation for Assigned
Names and Numbers ("ICANN"). After reviewing the Complaint for
administrative compliance, The Forum transferred the Complaint to the
Respondent, Tan Kim Sin, in compliance with Rule 2(a), and the administrative
proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d),
The Forum immediately notified Network Solutions, ICANN and the Complainant
that the administrative proceeding had commenced.
The Respondent registered the domain name with Network Solutions, the
entity that is the Registrar of the domain name. By registering its domain name with
Network Solutions, the Respondent agreed to resolve any dispute regarding its
domain names through ICANN's Uniform Domain Name Dispute Resolution
The Complaint is based on the trademark "GENTING" registered and/or
pending application in various classes in Malasia, Singapore, Brunei Darussalam
and Hong Kong.
The Complainant requests that the domain name "GENTING.COM" be
transferred from the Respondent to the Complainant.
The Respondent contends that he has legitimate interests in the domain
name, that the domain name was not registered and is not being used in bad faith,
and that the Complainant does not have exclusive right to the name "GENTING".
The above-captioned matter came on for an administrative hearing on June
28, 2000, before the The Hon. Harold Kalina (Ret.), John A. Bender, and The
Hon. Charles K. McCotter, Jr. (Ret.) Arbitrators. This matter is submitted for
decision in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy") and Rules (the "Rules"). Upon the written submitted record,
and the following findings and conclusions, we find for the Respondent.
FINDINGS OF FACT
1. Network Solutions confirmed that the Respondent is the registrant for
the domain name "GENTING.COM".
2. The Complainant, Genting Berhad, was incorporated on July 30, 1968,
in Malaysia and is one of the top ten public limited companies listed on the Kuala
Lumpur Stock Exchange, Malaysia. The Complainant has been using the
trademark since 1968 and the trademark is registered in various classes in
Malaysia, Singapore, Brunei Darussalam and Hong Kong.
3. In May, 1998, the Respondent decided to venture into a diving center
business providing diving courses, leisure dives and diving equipment in Johor
Bahru and Tioman Island. In September, 1998, the Respondent decided to base
his dive center at one of Tioman Island villages known as Kampung Genting
(Genting Village). His marketing strategy included web site publishing and he
secured the domain name "GENTING.COM". He registered his business with the
Registrar of Business, Ministry of Domestic Trade and Consumer Affairs (Johor
Bahru) under the name of "Genting Dive Discoveries" on May 11, 1999. Initial
marketing efforts were not encouraging and the Respondent is realigning his
business plan. The opening of the dive center operation is projected for the last
quarter of 2000, provided he obtains operating funds.
4. The Respondent challenges the Complainant's exclusive right to the
Name "GENTING", contending that the name is a popular local name widely used
in Malaysia, including use by over 200 businesses. However, we conclude that the
subject domain name is identical or confusingly similar to trademarks in which the
Complainant has rights.
5. The Respondent has legitimate interests in respect to the domain name.
Prior to any notice of the dispute, the Respondent had been preparing to use the
domain name in connection with a bona fide offering of goods or services.
6. The Complainant has failed to show that the Respondent registered or
used the domain name in bad faith. There is no evidence (1) that the Respondent
registered the domain name primarily for the purpose of transferring the domain
name to the Complainant or a competitor of the Complainant for consideration in
excess of out-of-pocket expenses directly related to the domain name; (2) that the
Respondent has engaged in a pattern of registering domain names for the purpose
of preventing owners of trademarks from reflecting the mark in a corresponding
domain name; (3) that the Respondent has registered the domain name primarily for
the purpose of disrupting the business of a competitor; or (4) that the Respondent
has intentionally attempted to attract for commercial gain Internet users to the
Respondent's web site by creating a likelihood of confusion with the
Complainant's mark as to the source , sponsorship, affiliation, or endorsement of
the Respondent's web site or location or of a product or service on the
Respondent's web site or location.
The domain name corresponds to the locality where the Respondent
planned to locate the dive center. The nature of the Respondent's business is not
similar to that of the Complainant. Although the Complainant is a major
corporation with a multi-facet business including recreation and resorts, the
Complainant has presented no evidence that it operates a dive center.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the
1.the domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights.
2.that the Respondent has no rights or legitimate interests in respect of the
domain name; and,
3.the domain name has been registered and is being used in bad faith.
The Complainant has failed to show the second and third of these elements.
We certify that we have acted independently and have no known conflict of
interest to serve as Arbitrators in this proceeding. Having been duly selected and
being impartial, We enter the following decision:
Based upon the above findings and conclusions, we find in favor of the
Respondent. Therefore, the relief requested by the Complainant pursuant to
Paragraph 4.i of the Policy is Denied. The Respondent shall not be required to
cancel or to transfer to the Complainant the domain name "GENTING.COM."
Domain Name Not Transferred