In an age where business is conducted online, trademarks are commercialised through websites and social media pages and consumers want to deal with businesses online instead of face to face, a business's virtual address is of the utmost importance if it wants to drive traffic to its website and conclude commercial transactions online.
So, what happens if a third party registers a domain name that incorporates an existing trademark? How can trademark owners begin to take action and enforce their rights?
This article sets out key points relating to domain name disputes which may assist businesses when determining whether they can take action.
The South African Institute of Intellectual Property Law (SAIIPL) is accredited as a dispute resolution provider for '.za' domain name registrations. The alternative dispute resolution (ADR) regulations follow a similar procedure to that of the World Intellectual Property Organisation in its administration of the Internet Corporation of Assigned Names and Numbers' Uniform Dispute Resolution Policy.
The ADR procedure entitles any party to lodge a complaint against a 'co.za' domain if it "takes unfair advantage of the rights" of that party (eg, where a domain name incorporates a registered or unregistered trademark) or is contrary to law or likely to give offence to any class of persons (eg, if the domain name amounts to racism).
In general, it takes about two to three months to conclude a dispute before the SAIIPL. The entire process is completed online.(1)
Notably, domain name disputes relate to the contents of the domain name and not necessarily the contents of the actual website to which the domain name points.
As such, if a trademark owner (with registered or unregistered rights) becomes aware that a third party has registered a domain name which incorporates their trademark, they may be entitled to prevent the use or registration of that domain name via the SAIIPL.
In contrast, trademark disputes before the high courts can be lengthy (with the earliest possible resolution being 12 months) and expensive. Therefore, trademark owners should first establish whether they have a valid legal basis to launch domain name dispute proceedings.
Endnotes
(1) Further information regarding the ADR dispute procedure is available here.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.
