De Kock Attorneys Copyright

Trade Marks – Domain names

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.

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