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Domain name registrations:
Due to the prominence of the internet and electronic
commerce, we encourage clients who register trade marks
to also consider registering domain names.
Domain names have a lot in common with trade marks, in
as much as both are used to distinguish the goods and
services of one trader from the goods and services of
another. If you intend trading on the internet, it is
necessary to register a domain name, to establish an
internet presence. A domain name therefore serves as a
self chosen contact address on the internet.
The most commonly used commercial space on the internet
in South Africa is .CO.ZA. This domain level is
currently administrated by a private company, called
UniForum SA.
Unlike trade marks, domain names are registered on a
"first come, first serve" basis and there are no strict
registration or use requirements.
Domain name disputes:
Currently there is no cross-referencing between the
.CO.ZA Domain Name Register, the South African Trade
Marks Register, or South African Companies Register.
This means that, although a name may be available and
registrable as a CO.ZA domain name on the internet, it
is not necessarily safe to use in trade, as a company
name, or available to register as a trade mark. This
situation often leads to disputes between domain name
owners and trade mark owners.
A CO.ZA domain name registration is currently not a
statutory right. Use or registration of a domain name
can merely afford a person common law rights in a name,
if the name has acquired a reputation. Therefore, if you
have adopted a name as a domain name and are using it on
the internet, and have not yet also obtained
registration of the name as a trade mark on the Trade
Marks Register, it is possible that there may be a third
party with a stronger right to the name, who may have
rights to compel you to transfer your domain name, based
on the strong statutory remedies provided for in the
Trade Marks Act. It is recommended that distinctive
domain names are registered as trade marks on the Trade
Marks Register to obtain strong and statutory protection
for such mark.
Disputes in respect of .CO.ZA domain names can be dealt
with by using online procedures. In this regard, the
Alternative Dispute Resolution Regulations, made under
Section 69 of the Electronics Communication Transactions
Act 2002, were published in the Government Gazette in
November 2008.
In short, these Regulations provide for online
procedures whereby a person can lodge a dispute against
a .CO.ZA domain name with an accredited domain name
dispute resolution service provider. The provider must
forward a copy of the complaint to the registrant. The
Registrant must then lodge a Response within 20 days.
Within 5 days from receiving the Response, the
Complainant may lodge a further reply. Upon expiry of 5
days, and no later than 2 days thereafter, the provider
must appoint an Adjudicator. The Adjudicator must then
forward its decision within 14 days of appointment.
In the dispute document, the Complainant in such
proceedings must submit, in accordance with the
prescribed procedure, and on a balance of probabilities,
that the domain name is either an abusive registration
or an offensive registration.
An abusive registration means that the domain name
either – (a) was registered or otherwise acquired in a
manner which, at the time when the registration or
acquisition took place, took unfair advantage of, or was
unfairly detrimental to the complainant's rights; or (b)
has been used in manner that takes unfair advantage of,
or is unfairly detrimental to the complainant's rights.
An offensive registration means a domain name in which
the complainant cannot necessarily establish rights, but
the registration of which is contrary to law, contra
bonus moris or is likely to give offence to any class of
persons.
To further succeed in proving that a domain name is an
abusive registration, the Complainants must show on
balance of probabilities (a) that the Complainant has
rights in the respective name/mark; and (b) that the
name/mark is identical/similar to the domain name; and
(c) that the domain name, in the hands of the
Registrant, is an abusive registration.
The Regulations also provide lists of factors which
could serve as indicators of an abusive or offensive
registration. These factors mostly relate to the facts
and background of the matter.
Need further advice or information?
You are welcome to contact us, if we can assist with
domain name registrations or domain name disputes. |
