PROCESSES/PROCEDURAL ISSUES FOR DECISION MAKING AT RCAKL 1 MARCH 2010 Syed Naqiz Shahabuddin NAQIZ & PARTNERS

.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 FLOW The Parties Involved  Provider (RCAKL) ( /  Complainant (the aggrieved party)  Respondent (the registrant of the domain name)  Administrative Panel (the Decision Maker)

PROCEDURE PROCESS FLOW Step 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 FLOW Step 2: The Provider Receives and Reviews the Complaint for compliance with the Policy and Rules Non-Compliant - Complainant to rectify Complaint within 5 working days or the Complaint will be considered withdrawn Compliant - The Provider will forward the Complaint to the Respondent after 3 working days from receipt of Fees

PROCEDURE PROCESS FLOW Step 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 FLOW Step 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 FLOW Step 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 FLOW Step 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 FLOW Step 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 FLOW Step 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 Indonesia Japan Malaysia Netherlands New Zealand Nigeria South Korea Singapore

FEES

FORMS Parties are advised to download and complete the forms from RCAKL’s website and it to RCAKL at  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 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 & PARTNERS ADVOCATES & SOLICITORS Thank You Syed Naqiz Shahabuddin Naqiz & Partners Unit PL01-A, Plaza Level No.45 Block A, Medan Setia 1 Plaza Damansara, Damansara Heights Kuala Lumpur Tel: Fax: Website: