Your Guide To Domain Name Protection In South Africa

Disputes relating to domain names are becoming increasingly prevalent in modern society. The ease with which a domain name can be registered and linked to a website means that any business should be watchful in protecting its intellectual property against the so-called “cyber squatter”.

It is important to distinguish between a domain name and the content on a website linked to a domain name. In the event that the content of a website infringes any trade mark or copyright of a person or entity, in such circumstances trade mark and copyright infringement proceeding must be considered.

However, in the event that domain name and not the contents of the website infringes a trade mark of a person or entity, then a domain name objection may be considered.

The two most common domain name objections in South Africa are the .co.za and .com domains. The requirements and procedures for each is slightly different and will be discussed individually below.

.co.za domain name objection:

In South Africa .co.za domain name objections are overseen and adjudicated by the South African Institute of Intellectual Property Law (“SAIIPL”).

In order for an objection to be successful, the complainant must show the domain name in question is either an:

• Abusive registration or
• Offensive registration.

A domain name can be viewed as an abusive registration in the event that the domain was registered or acquired which, at the time the domain was registered or acquired, took unfair advantage of or was unfairly detrimental to the complainant’s rights. A domain can also be viewed as abusive in the event that it is used in a manner that takes unfair advantage of or is unfairly detrimental to the rights of the complainant.

An offensive domain name registration is a domain in which the complainant can not necessarily establish right, but the registration of which is contrary to law, contra bonos mores or is likely to give offence to any class of persons.

.com domain name objections:

The World Intellectual Property Organisation (“WIPO”) administers and adjudicates any .com domain name objection. Any domain name dispute adjudicated by WIPO is done in accordance with the so-called Uniform Domain Name Dispute Resolution Policy (“UDRP”).

In terms of the rules relating to the UDRP, a complainant must show that the domain name in question complies with the following requirements:

• The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. This would be in circumstances where the domain name in question is identical or confusingly similar to a registered trade mark of which the complainant is the proprietor.
• The registrant of the domain name in question has no rights or legitimate interests in respect of the domain name. Various factors can influence this requirement, including the fact whether the registrant of the domain name is commonly known by the domain name, even if the registrant of the domain in question has not acquired any trade mark rights.
• The domain name in question was registered and is being used in bad faith. An example of a domain registered in bad faith would be where the registrant of the domain registers the domain name in question and attempts to sell the domain to the complainant, or any other person, for an amount exceeding the registrant’s “out of pocket” expenses to register the domain.

In the event that you are concerned about a domain name, which may infringe any of your trade mark rights, or if you require more information regarding the procedure or costs involved in lodging a domain name objection, you may feel free to contact us at any time.