February, 2001
In the recent domain name dispute between Skrine v Skrine & Ors (Case No. D2000- 1105, WIPO Arbitration and Mediation Center), the Malaysian law firm, Messrs Skrine (“the Complainant”), succeeded in what is now commonly known as the ICANN Proceedings in its attempts to recover its business address in cyberspace. The action was filed against three Respondents. The First Respondent was the recorded registrant of the domain name whereas the Second and Third Respondents were the contended actual entity and individual behind the conspiracy.
As set out in the Complaint, the Complainant was founded on January 5 1963 and is one of the oldest and largest law firms in Malaysia. The name was taken from its founding partner, Mr John Skrine. Inter alia, it was further contended that the Complainant had achieved extensive exposure throughout Malaysia and abroad as a result of its long establishment and broad client base, which included individuals, other law firms and professional bodies, traders, companies, non-profit organisations, statutory bodies, multinational companies and many others; whether Malaysian or foreign. Evidence was also adduced in respect of the Complainant’s public exposure through the many landmark and significant cases which it had handled since its inception. The Complainant was also listed in various international legal directories and are members of at least two leading international associations of law firms, namely Pacific Rim Advisory Council and Lex Mundi.
To substantiate its claim that the Respondents did not have any legitimate rights to the domain name and that it was registered in bad faith, the Complainant relied and adduced evidence on the following matters :
1. That the First Respondent, Mr Skrine Low Chit Sin, was a fictitious character made
up by the Second and/or Third Respondents in order to frustrate the attempts of the
Complainant to register the domain name
2. That the address of the First Respondent, supposedly in China, which was provided by the Respondents to the Registrar, Network Solutions Inc., was false.
3. That the contact details provided by the Respondents were false. The contact addresses, supposedly in the United States, differed where they should not have and the postcode was identical to the Third Respondent’s Malaysian residential postcode. The phone number when rung, was traced back to the Third Respondent’s Malaysian mobile phone. Upon investigations, the Third Respondent was related back to the Second Respondent by virtue of discreet affiliations.
4. That the Respondents had never used the domain name.
5. That the Second Respondent had offered to transfer the domain name for a one time payment of RM1,000 after being put on demand notice by the Complainant.6. That the surname “Skrine” was a unique surname and not one normally used as first names.
7. That the actions of the Respondents indicated that there was a conspiracy to frustrate the then pending legal proceedings brought by the Complainant in the High Court of Malaya against the Second Respondent and a director of the Second Respondent. The pending legal proceedings was one based on passing off in respect of the same subject matter. At the point of filing the Writ of Summons the domain name was registered in the Second Respondent’s name. Approximately three weeks after the unsealed Writ of Summons was served on the Second Respondent’s solicitors however, the Complainant discovered that the domain name had been re-registered to the First Respondent. This was the First Respondent’s first publicly recorded appearance.
8. That the Respondents had demonstrated a propensity for domain name hijacking or
cybersquatting because apart from
1. They began in August 1998 as providers of top level domain name registration, web designing and hosting services but have now advanced to become a total solutions provider.
2. Their earlier template, which was used to register domain names by their customers, was such that if no valid e-mail was provided or filled up, the Second Respondent would be registered as the registrant and contact.
3. Skrine was, prior to January 1 2000, known as Skrine & Co and not Skrine.
4. The First Respondent was a Malaysian of 27 years of age, who resides in the small town of Seremban and was currently working in China.
On the contentions and explanations put forward by Respondents, the Panel held, that “…the further explanations sought to be given by the Respondents in their response, when there is no denial to the abovementioned specific allegations made by the Complainant, do not inspire any credibility and merit non-acceptance” and was of the opinion that the Respondents did not have any rights or legitimate interest in the word “skrine”.
With regard to bad faith, the Panel relied on firstly, the Second Respondent’s attempts
to resell the domain name to the Complainant and secondly, the history of
cybersquatting on the part of the Respondents. The landmark decision of Marks &
Spencer Plc & Ors v One in a Million & Ors (1999) 42 IPR 309 was referred to by the
Panelist whereupon he held that the registration of
The decision can be viewed in full at http://arbiter.wipo.int/domains/decisions