It is possible in South Africa to resolve co.za domain name disputes without going to court. Complaints can be lodged with the South African Institute of Intellectual Property Law (SAIIPL) and are finalised within two or three months. If the Complainant is successful, the domain name will automatically be transferred to it.
Several rulings have been made by the SAIIPL since the introduction of the process a few years ago. This article sets out a brief synopsis of a few key findings.
Unregistered trade marks
It is not necessary to own a registered trade mark to lodge a complaint. Provided that the Complainant can show he has rights in a name through use, he should have a basis on which to proceed.
The first .co.za domain name dispute, decision no ZA2007-0001, related to an unregistered trade mark, MR PLASTIC. The Complainant was ultimately unsuccessful because it failed to establish that the MR. PLASTIC trade mark was distinctive of its business.
It was established in the decision that the threshold of proof in the case of an unregistered trade mark carries with it a weightier burden - the Complainant must show a reputation in the mark; that its trade mark is distinctive; and that the Registrant does not have a concurrent claim to the mark.
The importance of proving reputation and goodwill in the case of an unregistered trade mark was confirmed in decision nos ZA2007-0009 (oxycell.co.za) and ZA2007-0011 (vcbet.com).
In the “oxycell” decision the Adjudicator found that the burden of proof is not to show that a Complainant would be successful in a passing-off case but that it has goodwill and reputation protectable by way of passing off proceedings. In the “vcbet” decision, the Adjudicator found that the requisite reputation and goodwill required for the purpose of passing off proceedings had been established.
Descriptive trade marks
In Decision no. ZA2007-0008 (privatesale.co.za), the Adjudicator held that “negotiations to acquire a domain name are not sufficient to establish reputation or goodwill, and that it is trite in trade mark law that words which are purely descriptive or generic cannot be registered, or give rise to a protectable right, unless the words have been used to such an extent that the words have acquired a second meaning”.
This was also considered in decision no ZA2007-0004 (telkommedia.co.za). The Complainant, Telkom Media (Pty) Limited, lodged a complaint against the registration of the domain name telkommedia.co.za. The Registrant alleged that the word TELKOM was an acronym for the word telecommunications.
The Adjudicator held that “the correct acronym for the word TELECOMMUNICATIONS would be TELCOM, and that the word TELKOM cannot be regarded as generic, common or ambiguous”. It was found that “the TELKOM name and mark is undeniably the dominant feature of the domain name and it is the feature known to the public”.
If the Registrant adds a descriptive or generic word such as “Business” or “Internet” or even “Media” to the distinctive trade mark, the conclusion that the Complainant’s name or mark is similar to the disputed domain name, cannot be escaped.
Indications of abusiveness – bad faith
In decision no ZA2008-0015 (fifa.co.za) Fifa lodged a complaint when the Registrant registered the domain name fifa.co.za and linked it to a commercial website bearing a number of the Complainant’s trade marks such as FIFA WORLD CUP SOUTH AFRICA 2010.
The adjudicator found that the main question for consideration is, “whether or not the circumstances indicate that the Registrant had used or registered the domain name in a way that could cause the public to believe that the domain name was registered in connection with the Complainant”.
In decision no ZA2008-0015 (sunglasshut.co.za), the Adjudicator found that the passive use of the domain name sunglasshut.co.za could amount to bad faith depending on the circumstances. In arriving at this conclusion, the Adjudicator took cognisance of the fact that the Registrant was aware of the Complainant when he registered the disputed domain name and that the Registrant offered to sell the domain name to the Complainant.
The Adjudicator concluded that “the Registrant primarily registered the domain name to sell it to the Complainant” and characterised the Registrant’s conduct as “opportunistic bad faith”.
If the dispute involves a domain name which resolves to a dedicated fan website, as was the case in decision no ZA2008-0014 (citroen.co.za), the burden of proof is placed upon the Registrant to establish that the domain name was not an abusive registration.
In this matter, the Adjudicator was required to weigh up the competing rights between “the legitimacy of the Registrant’s tribute site and the rights of the Complainant in and to its trade mark”. In doing so the Adjudicator considered the circumstances under which it would be permissible to adopt the mark of another.
The adjudicator came to the conclusion that the test is to determine whether or not it was done in a manner that was wholly descriptive and truthful. He found that the registration of the trade mark as a domain name, without the addition of any other words, (citroen.co.za) did not meet this test despite the site being a genuine fan site.
The registration of the domain name with the addition of the word “sucks” for example, could well meet this test. The Adjudicator further held that “a registered trade mark proprietor ought to be able to register a domain name comprising its trade mark and should not be held at ransom because he was not quick enough to do so”.
In decision no ZA2008-0016, the mares.co.za and dacor.co.za domain names were registered by the Registrant who, at the time of registration, was the distributor of MARES and DACOR diving equipment. The Registrant registered the domain names with full knowledge and consent of the manufacturer.
When the distribution agreement between the parties was terminated, the Registrant continued to advertise and sell genuine DACOR and MARES products on these websites. The Complainant was then appointed as the new distributor and alleged that the Registrant’s conduct was unfair competition and would be unfair and detrimental to the Complainant’s rights.
The Adjudicator found that the Complainant could not claim trade marks rights in the DACOR and MARES names. It could, however, claim commercial rights based on its distribution agreement. Commercial rights are, though, more limited in reach than trade mark rights.
The Complainant’s rights did not extend to prevent competition from the Registrant, provided that the marketing and selling of the products by the Registrant would not mislead the public. The Adjudicator held that there was no suggestion that the Registrant sold anything but genuine goods.
Thus, the Complainant was simply engaged in legitimate competition. There was no indication that the Registrant was contractually required to cease use or transfer the domain names once its agreement terminated. Consequently, the Adjudicator found that the Registrant could retain the domain names.
In broad terms, the SAIIPL decisions have entrenched the main tests of trade mark law in South Africa. The Adjudicators have applied the spirit of trade mark infringement and passing off principles.
However, the Adjudicator does have the leeway of knowing that the main thrust of the domain name dispute Regulations is equity, unlike our trade mark law, in which equity, in the legal sense, should not play a role.
The Adjudicators do, consequently, have considerable discretion and can take into account a host of factors which the High Court would not be able to do. Of course, until now, most disputes have concerned trade mark matters and so it stands to reason that these would be the principles applied. We await with interest any interpretations on disputes which go beyond trade mark matters.