By Hoh Jerick
Common and generic words are always used in the day to day process of an individual’s daily life. However, situations occur within the trademark field involving phrases such as the memorable “I’m Lovin’ It” by McDonalds that goes hand in hand with a catchy tune or even KFC’s phrase on a piece of chicken that is “Finger Lickin Good”. For promotional and marketing purposes, a phrase will be even more common with short liners to attract customers such as “Super Cheap Sale” or “Buy one get one free”.
In an undoubtedly homogenous world, a dispute involving a domain name is unavoidable as shown in the case of Celcom Planet (Celcom) v. OC Tech (OC), where the disputed domain name <shockingdeals.com.my> was put into a motion of arguments when OC registered the domain name and was allegedly using it unlawfully.
Celcom is a joint venture company established by SK Planet Co. Ltd. and Celcom Mobile Sdn. Bhd. where the former provides services relating to online and mobile service platform and is said to be the beneficial owner of the mark “SHOCKING DEALS” in Malaysia, South Korea and Turkey. Celcom was given the authorisation by SK Planet to use and act for matters in regards to the mark in Malaysia and is said to have operated its website “http//www.11street.my/” since April 2015 which provided sellers and buyers with a platform where they can conduct online transactions of sales and purchases. On the website, the term “SHOCKING DEALS” was used to acknowledge potential buyers on its weekly or monthly sales.
On March 23rd 2016, Celcom filed a complaint with the Kuala Lumpur Regional Centre for Arbitration and asserted that the disputed domain name as allegedly used unlawfully by OC was identical to that of Celcom’s mark and that they have not permitted OC to use the mark which may sufficiently damage the reputation of Celcom’s business.
In reply, OC stated that the term “Shocking Deals” is commonly used by other businesses dealing in retail or services, and thus Celcom should not have exclusive rights to the use of those words. However, although the term “Shocking Deals” is common and generic, the panel in referring the case of Oki Data Americas Inc. v ASD Inc. found that OC has not provided evidence which demonstrates that they are prepared to use the disputed domain name with any bona fide offering of goods and services. Hence, OC had failed in establishing that they had any legitimate interest or rights in acquiring the disputed domain name. In addition, the panel had also taken notice of Celcom’s previous cease and desist letter to Lazada in regards to the same issue faced by OC, whereby Lazada was advised to desist from using the mark “Shocking Deals” in their ongoing Shocking Raya Deal promotion.
OC’s assertion that they had never heard of Celcom’s mark until the cease and desist letter sent by Celcom in November 2015 was implausible as Celcom’s website was operational since April 2015 and the registration made by OC on the disputed domain name was only conducted on August 2015. Furthermore, Celcom’s operation of the website is described as successful as the website has grown exponentially in terms of users and subscribers, and has invested a substantial amount of its resources and effort in advertising the website on Google and Yahoo advertising services. As such, the panel ordered for the disputed domain name <shockingdeals.com.my> to be transferred to Celcom.
This dispute reflects that traders of any kind should avoid using fully descriptive or generic words in its representation of any kind of activities, brands or events not because it may bring about a dispute among competitors, but the mere application of such words loses the trader’s uniqueness in its commercial undertakings.
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