PROCESSES/PROCEDURAL ISSUES FOR DECISION MAKING AT RCAKL

1 MARCH 2010

Syed Naqiz ShahabuddinNAQIZ & PARTNERS

naqiz@naqiz.com

.MY DOMAIN NAME DISPUTE RESOLUTION RCAKL is the sole .my domain name dispute resolution

(DNDR) service provider The appointment is made by the Malaysian Network

Information Centre (MYNIC) (or .my Domain Registry) – administrator and registry of .my domain names

RCAKL governs and administers : .my DOMAIN REGISTRY’s DNDR Policy DNDR Rules and Supplementary Rules of KLRCA

TYPES OF DISPUTES

Currently RCAKL administers only .my country code top level domain names and those which are registered on a first-come-first-serve basis:

.com.my

.org.my

.net.my

.my

PROCEDURE PROCESS FLOWThe Parties Involved

Provider (RCAKL) (www.rcakl.org / www.rcakl.org.my)

Complainant (the aggrieved party)

Respondent (the registrant of the domain name)

Administrative Panel (the Decision Maker)

PROCEDURE PROCESS FLOWStep 1: The Complainant

Submits Complaint to the Provider (in soft copy and hard copy). Complaint forms are downloaded from RCAKL’s website

Elects for a 1 or 3 member Panel. If elects for 3 panel member, then the Complainant may nominate 3 Panel members

Pays Fees within 5 working days of submission of Complaint

PROCEDURE PROCESS FLOWStep 2: The Provider

Receives and Reviews the Complaint for compliance with the Policy and Rules

PROCEDURE PROCESS FLOWStep 3: The Respondent

Receives the Complaint from the Provider. Proceeding commences at this stage.

Respondent has an option to elect a 3 member panel if the Complainant initially elected a 1 member panel• Respondent pays ½ of the Fees if elects a 3 member panel• Submits 3 names if it is a 3 member panel

Forwards Response to the Provider

• 15 working days to submit a Response and to pay the Fees for a 3 member panel

PROCEDURE PROCESS FLOWStep 4: The Provider

Receives the Response from the Respondent, failing which deemed no Response (which does not mean automatic decision in favour of the Complainant though)

Forwards the Response to the Complainant

PROCEDURE PROCESS FLOWStep 5: The Complainant

Receives the Response (if any) from the Provider

Forwards a Reply to the Provider (if any)

If the Respondent requests for a 3 member panel, the Complainant now also submits 3 names

• 5 working days to submit a Reply

PROCEDURE PROCESS FLOWStep 6: The Provider

Receives the Response (if any) from the Provider

Receives a Reply (if any) from the Complainant

Appoints the Panel

• 5 working days to submit a Reply

PROCEDURE PROCESS FLOWStep 7: The Panelist(s)

Executes the Statement of Independence and Impartiality prior to appointment by the Provider

Receives the brief from the Provider

Forwards Decision to the Provider unless the Complaint is settled or terminated

14 working days to deliver Decision

PROCEDURE PROCESS FLOWStep 8: The Provider

Receives Decision from the Panel

Within 3 working days, notifies the Complainant, Respondent and .my Domain Registry of the Decision

If there is no challenge to the Decision (court or arbitration), it will be implemented by .my Domain Registry after 10 working days

PANELISTS

Australia France India

IndonesiaJapan

Malaysia Netherlands New Zealand

NigeriaSouth KoreaSingapore

FEES

FORMS

Parties are advised to download and complete theforms from RCAKL’s website and email it to RCAKL at

dndr@rcakl.org.my

Form A - Complaint Form B - Response Form C - Request for Ext. of Time to Respond to Complaint Form D - Reply Form E - Withdrawal of Case Form K - Ackldgmt of Payment of Fees – Single Panelist Form L - Ackldgmt of Payment of Fees – Three-member Panel Form N - Ackldgmt of Payment of Fees- Three-member Panel Form P - Request for In-Person Hearings

CASE STATISTICS

• No. of domain names registered with .MY Domain Registry as at Jan 2010: 92,155

• Only 21 MYDRP cases filed since 2003:– Transferred: 13– Terminated / Withdrawn: 4– Status Quo: 3– Pending: 1

• Examples: volkswagen.com.my, google.com.my, boss.com.my, legoland.com.my

LOW NUMBER OF MYDRP FILINGS

Relatively low number of Complaints filed :

– No anonymity due to requirement for local presence (hence the lower level of abusive registrations) c/f .com

– Trademark owners tend to register variations rather than pursue a complaint

– The lack of qualified advisors– The lack of IP awareness– The lower number of domain name registrations as compared to

<.com> registrations

SUBSTANTIVE ELEMENTS TO A COMPLAINT

Two elements must be proved to enable a Complainant to succeed:

1.Identical or confusingly similar mark to which the Complainant has rights

2.Registration or use in bad faith

SOME ISSUES THAT HAVE ARISEN

Lack of certainty even after a Decision is made by the panelist. Parties challenge the Decision in courts

The requirement for local presence raises some issue with regard to standing of Complainants without local presence e.g. foreign Complainants

There is no compensation under the existing domain name dispute resolution policy

NAQIZ & PARTNERSADVOCATES & SOLICITORS

Thank YouSyed Naqiz Shahabuddin

Naqiz & PartnersUnit PL01-A, Plaza Level

No.45 Block A, Medan Setia 1

Plaza Damansara, Damansara Heights

50490 Kuala Lumpur

Tel: +603 2095 1185

Fax: +603 2095 1186

E-Mail: naqiz@naqiz.com

Website: www.naqiz.com