A panel of 3 panellists appointed by The Kuala Lumpur Regional Centre for Arbitration (KLRCA) has ruled in favour of PropertyGuru Group’s ownership of the domain name “propertyguru.com.my” in respect of the complaint filed by AllProperty Media Pte Ltd (“PropertyGuru”) against the use and registration of the "propertyguru.com.my" domain name sometime in May 2011 by Think Media Sdn Bhd, a Malaysian company acquired by the iProperty group of companies in 2010 (for ease of reference the term "iProperty" will be used loosely to refer to Think Media Sdn Bhd and/or the iProperty group of companies in Malaysia, as is applicable). It was ruled that iProperty had acted in bad faith and was requested to transfer the "propertyguru.com.my” domain back to PropertyGuru by 4th of August 2011. More details follow below.
A panel of 3 panellists consisting of legal specialists in the area of intellectual property presided over the case and on 20th July ruled that:
- The "propertyguru.com.my" domain name is identical to PropertyGuru's "PropertyGuru" trademark, and is closely and confusingly similar to PropertyGuru's "propertyguru.com.sg and "propertyguru.com.my" trade marks
- PropertyGuru has established goodwill and reputation with end users and real estate developers in the "PropertyGuru" trade mark in Malaysia since mid 2008
- iProperty has used and/or registered the "propertyguru.com.my" domain in bad faith
- iProperty, being a competitor of PropertyGuru, was fully aware of PropertyGuru's prior use, goodwill and reputation in the "PropertyGuru" trade mark in Malaysia
- The registration and use by iProperty of "home-guru.com.my" which is closely similar to “homeguru.com.my” belonging to HomeGuru Sdn Bhd, the Malaysian company which forms part of the PropertyGuru group of companies further supports an inference of bad faith by iProperty in using and registering the “propertyguru.com.my” domain
- iProperty has failed to demonstrate any rights and legitimate interests in the "propertyguru.com.my" domain name
As a result, the panel directed iProperty to transfer the "propertyguru.com.my" domain name to PropertyGuru.
“The panel appointed by KLRCA has clearly ruled that we are the rightful owners of 'propertyguru.com.my' and that iProperty had acted in bad faith in relation to this. We are delighted that justice has been served and that we can continue to focus on providing the best possible service to our end users and advertisers," stated Steve Melhuish, PropertyGuru Group CEO.
As a result of iProperty's use of the "propertyguru.com.my" domain name, PropertyGuru had no choice but to operate its Malaysian website using the "homeguru.com.my" domain in 2010.
