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In the recent case of Junzhi Wang & Anor v T.C. Pharmaceutical Industries Co. Ltd  1 MLRH 549, the Kuala Lumpur High Court held that it has no jurisdiction to review and set aside a decision of an Administrative Panel on a complaint filed under the Uniform Domain Name (Domain Name) Dispute Resolution Policy (“UDRP”).
Before going into the facts of the case, it’s worth setting out some context for those unfamiliar with the domain name landscape.
The UDRP is a complaint process for the resolution of disputes relating to domain names on the internet. Most of the time, such disputes arise when one party registers a domain name that contains the name or trademark of a different party. You may have heard of the term “cyber-squatting” – this is when a person registers a website address with the name of a well-known brand in bad faith with the intention of subsequently selling it to rightful trademark owner for profit. The UDRP complaint process is a means to which companies often resort in order to combat cyber-squatters.
The UDRP was established by the Internet Corporation for Assigned Names and Numbers (“ICANN”), a non-profit organisation that maintains the central repository of all IP addresses across the world, as well as manages the Domain Name System. Think of the internet as a colossal library and domain names as the titles of the books on the shelves – ICANN is the librarian in charge of organising the book titles, making sure each domain name is unique and identifiable.
The UDRP applies to all generic top-level domains (domain names that end with for example, .com, .net, .org). It is also incorporated by ICANN-accredited registrars (companies who provide domain name registration services) in all registration agreements with their customers (registrants or domain name holders).
The UDRP sets out the terms and conditions which are to be followed in the event of any dispute between the registrant and any other third party (other than the registrar) in connection with the registered domain name.
Notably, a complainant is required to submit to a mandatory administrative proceeding before one of a select few ICANN-approved administrative-dispute-resolution service providers. The main remedies available under the policy are limited to either a cancellation of the disputed domain name or a transfer to the complainant.
Now, coming back to the specific facts of this case.
The Defendant, T.C. Pharmaceutical Industries Co. Ltd. (“TCP”), is a Thai company which has been manufacturing and exporting “Red Bull” energy drinks for decades. The 2nd Plaintiff, Redbull Vitamin Drink Co., Ltd (“RBVD”), is a joint-venture company established by TCP and others to produce and sell “Red Bull” energy drinks in China under licences, which expired in 2018.
Prior to expiry of the licences, however, several trademarks bearing the “Red Bull” name or the Chinese equivalent were registered in China in the name of RBVD. Multiple domain names using the “Red Bull” name were also registered, such as <redbullchina.com>, <redbullchina.cc>, <redbullbeijing.com>. Eventually, these domain names were acquired by the 1st Plaintiff, Junzhi Wang (an employee of RBVD). Wang had entered into a Registration Agreement with a domain name registrar and web service provider, WebNIC.
In 2020, the Supreme People’s Court of the Peoples’ Republic of China (China’s apex court) adjudged that TCP is the rightful and legal owner of the Chinese “Red Bull” trademarks. This was just the latest in a long-running dispute between TCP and RBVD (also commonly known as Red Bull China). Subsequently, TCP filed a complaint under the UDRP to a World Intellectual Property Organization (WIPO) Administrative Panel (“WIPO Panel”) against Wang as the registrant of the domain names to contest ownership of the domain names. The WIPO Panel ultimately decided in favour of TCP and ordered for the domain names to be transferred to TCP.
This led the Plaintiffs to file a civil suit here in the Kuala Lumpur High Court for unlawful interference with trade against TCP, on the basis that the filing of the UDRP complaint was done wrongfully and with intent to injure the Plaintiffs. The Plaintiffs sought, among others, an order that the WIPO Panel’s decision be set aside and that the domain names shall remain registered in the Plaintiffs’ names. Naturally, TCP counterclaimed against the Plaintiffs for unlawful interference with trade, passing off and also abuse of legal process.
All this begs a curious question – How (or rather why) did these parties from Thailand and China end up fighting over China-centric domain names all the way here in Malaysia?
It appears that the Plaintiff’s main (based on the grounds of judgment, seemingly, sole) reason was due to the jurisdiction clause in the Registration Agreement between Wang and WebNIC:
“This Registration Agreement is governed by the laws of Malaysia and the Registrant hereby consents to the exclusive jurisdiction of the courts in Malaysia.”
Unfortunately for the Plaintiffs, this clause alone was not sufficient for the High Court.
The Learned Judicial Commissioner Azlan Sulaiman analysed Sections 23(1) and 24 of the Courts of Judicature Act 1964, which provide for the ambit of the civil jurisdiction of the High Court, and concluded that none of those provisions applied in this situation so as to confer on the Court the jurisdiction to hear and determine any action to challenge a decision of an administrative panel formed under the UDRP. His Lordship found that the Court did not have jurisdiction or the power to make any order to set aside the WIPO decision.
As for the jurisdiction clause in the Registration Agreement, the High Court found that this is a private arrangement between Wang and WebNIC, not with TPC. In any event, a private agreement between contracting parties cannot override the express provisions of our Federal Constitution or the Courts of Judicature Act 1964 that confer civil jurisdiction on the High Court.
The High Court went further and decided that, even assuming that it has jurisdiction, it is not one of the functions of the Court to act as a judicial review or appellate body of any decision made under the UDRP scheme. In coming to this decision, the Learned Judicial Commissioner referred to several English decisions, namely Yoyo.Email Ltd v Royal Bank of Scotland Group PLC  EWHC 3509, Pankajkumar Patel v Allor Therapeutics Inc  All ER (D) 172 and Toth v Emirates  FSR 26, which denied challenges to UDRP decisions. His Lordship held that the Court should not interfere with or second guess the Administrative Panel’s findings and decision.
The learned Judicial Commissioner also dismissed the Plaintiffs’ claim for unlawful interference with trade as they had failed to establish any of the elements required to establish this tort. The High Court further opined that in filing its UDRP complaint, TCP was merely acting to protect its legal rights using remedies afforded under the law and hence cannot be said to be using unlawful means whatsoever or have any intention to injure the Plaintiffs.
As for TCP’s counterclaims, the High Court found it had no jurisdiction to hear TCP’s passing off action because the cause of action arose in China as it involved domain names registered in that jurisdiction. Even if the Court had jurisdiction, it was held that TCP had failed to establish the element of misrepresentation. Thus, both counterclaims for passing off and unlawful interference against the Plaintiffs failed. Nonetheless, the High Court allowed TCP’s counterclaim for abuse of legal process, finding that the filing of the civil suit itself by the Plaintiffs constituted an abuse of process for the same reasons which culminated in the dismissal of the Plaintiffs’ claims.
Telling of the Court’s displeasure with the Plaintiffs’ abuse of process, the High Court awarded not only RM200,000 as general damages in favour of TCP for the abuse of process, but also an additional RM300,000 as exemplary damages against the Plaintiffs.
The decision is the first reported judgment in Malaysia which sheds light on the novel issue of the interplay between our local Court and UDRP complaints.
That said, the High Court has left one question open for now – What recourse does a party have if they are dissatisfied with a UDRP decision of an Administrative Panel?
The UDRP itself does not contain any express provision for an appeal process. However, paragraph 4k of the UDRP states that the mandatory administrative proceeding does not prevent parties “from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.”
While this suggests that aggrieved parties could run to a court to appeal against a panel’s decision, foreign authorities has decided that this is not the case. In an extract of the judgment of the English case of Pankajkumar Patel which was quoted by the Learned Judicial Commissioner in this case, the UK High Court held that that a claimant must demonstrate some independent right of action justiciable by the court, rather than simply seek for a judicial review or appeal. Thus, held the UK High Court, an unsuccessful registrant must plead and prove a cause of action giving him an interest in retaining the domain name, therefore, facing “considerable difficulty in identifying a cause of action upon which the Panel’s decision can be challenged.”
The Learned Judicial Commissioner in our case here did not go so far as to adopt and follow this part of the decision. Thus, there is as yet no concrete authority in Malaysia on the proper procedure (if any at all) to appeal against a decision of a panel in domain name dispute proceedings.
A further matter to be aware of is that the situation could potentially be different for MYDRP decisions. MYDRP, which stands for MYNIC's Domain Name Dispute Resolution Policy, is essentially the Malaysian equivalent of UDRP – it is an administrative process for disputes involving a .my domain name that is established by MYNIC (the official .my domain registry recognised by ICANN). It remains to be seen whether a court in the future may find that it has jurisdiction to set aside a MYDRP decision, given that the place of registration of the domain names and websites and possibly, the parties involved are closer to home and may satisfy the jurisdiction requirements under our Courts of Judicature Act 1964.
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