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01 December 2008
South Africa was slow to provide a forum for the effective resolution of domain name disputes. Until April last year the High Court was the only effective adjudicator of domain name disputes involving infringement of registered trademarks and South African country code top-level domains (ccTLDs) such as ‘co.za’. On April 1 2007 that all changed when the Alternative Dispute Resolution Regulations in terms of Section 69 read with Section 94 of the Electronic Communications and Transactions Act (25/2002) came into effect.
The regulations require a domain name registrant to submit to the procedure under the regulations if any party files a complaint against a '.co.za' domain with an accredited domain name dispute resolution service provider alleging that the domain name "takes unfair advantage of the rights" of that party or "is contrary to law or likely to give offence to any class of persons". The South African Institute of Intellectual Property Lawyers is such a service provider and has so far completed 23 decisions under the regulations. The fourteenth was a decision on the citroen.co.za domain name(1) and the first to deal with a ‘tribute site’.
The complainant was Automobiles Citroën, founded in France in 1919 by Andre Citroën. The domain name 'citroen.co.za' was registered on March 16 2000 by South African Citroën enthusiast Mark Garrod, who has been a fan of older Citroën cars since the late 1970s, owning five such vehicles at the time of the hearing.
The complainant asserted that it had held registered rights in respect of the mark CITROËN since 1953 and that the mark was identical or similar to the domain name. It further alleged that in the hands of the registrant the domain name was an ‘abusive registration’ as defined in the regulations. The definition is vague, but the key elements are that the registrant acquired the domain in a manner which, at the time of acquisition, was unfair having regard to the complainant’s rights or became unfair due to the later manner of use. Apart from that definition, Regulation 4 of the regulations contains a list of factors which would indicate that a registration is abusive, although in the opinion of the adjudicator, the list is not exhaustive.
The complainant duly contended most of them, namely that:
Of the eight factors listed in Regulation 4(1), the adjudicator found as a matter of fact that the complainant had established none. It seems to have been abundantly clear that the registrant did not abuse the domain at all, running what was plainly an enthusiast’s site from which he made no attempt to make a living or to gain any form of commercial advantage. There was also some doubt that the complainant had been active in South Africa at the time the domain was registered, so it was plain that the complainant had failed to make out its case.
Regulation 5 lists factors which would indicate that a domain name has not been abusively registered and specifically provides for a domain name that is the same as a third-party trademark nevertheless to be a legitimate registration where there is ‘fair use’. The relevant portions read:
“(b) the domain name is used generically or in a descriptive manner and the registrant has made fair use of it;
(c) that the registrant has demonstrated fair use, which use may include web sites operated solely in tribute to or fair criticism of a person or business: provided that the burden of proof shifts to the registrant to show that the domain name is not an abusive registration if the domain name is identical to the mark in which the complainant asserts rights, without any addition.”
The registrant argued that:
The registrant did use the domain name in connection with a good-faith offering of goods or services, such as the ability for Citroën enthusiasts to advertise their cars for sale. The registrant did not believe registering 'citroen.co.za' would disrupt the business of the complainant since the complainant was not conducting business in South Africa at that time. It is difficult to imagine a better case for third-party ownership of a domain name closely similar to a registered trademark. Certainly, if the case had been one of trademark infringement before issue of the regulations, a finding of non-infringement would have been almost inevitable.
It was the adjudicator’s take on trademark law that proved the registrant’s undoing. In the adjudicator’s opinion, the problem at issue was the circumstances in which the unauthorized use of a trademark is permissible. Once trademark rights are in issue (as opposed to a person’s name or another domain name that has no brand significance), so runs the reasoning, the scope of trademark law cannot be excluded. The adjudicator cited as his authority a spare parts case, Commercial Autoglass (Pty) Ltd v BMW.(2) This case had been concerned with the sale of spare parts for motor vehicles - specifically windscreens - and, although it was clear that the use was bona fide, the court found as a matter of fact that members of the public could be misled in that the spare parts seller had failed to make it “unequivocally clear” by a disclaimer that the goods were not original BMW brand goods. The court specifically rejected US fair use jurisprudence on the subject and ignored the fact that the parts dealer had simply listed, as briefly as it could, the cars for which it had windscreens, being all popular makes.
The adjudicator’s main consideration was that there had been an “appropriation of a trademark”. He quoted from Commercial Autoglass:
“(t)rademark use that is not misleading (in the sense of suggesting provenance by the trademark owner) is protected, not only constitutionally but in terms of ordinary trademark principles.”
The judge went on to say:
“Why can [the appellant] not, through the use of a few words, convey the true facts to the public?... from this one can only deduce that the appellant wishes to obtain an unfair advantage…“
Applying this to a domain name consisting of ‘citroen’ and a ccTLD address, the adjudicator thought a genuine tribute website name would be 'ilovecitroen' or somesuch - in other words, the addition of some language in the address itself which would make it clear that the site is not an official one before anyone navigates there. He then decided that the registrant had failed to prove (the onus having shifted in terms of Section 5(c)) that it was not an abusive registration and ordered its transfer to the complainant. Since the registered mark has an umlaut over the ‘e’ and the domain name did not, it was not identical to the registered mark, but it was very closely similar so there must be some question whether the adjudicator was correct in holding that the onus had shifted.
This is a decision that will please some brand owners, since it is another step towards an absolute right in a trademark, a right ‘in gross’ akin to copyright, and makes it plain (if the decision is followed; it does not have the weight of law, since it is not a court decision) that a domain name cannot be the same as another’s registered trademark, no matter how pure the motives of the registrant. Others, pointing to the fact that there was no use as a trademark will mourn the further erosion of freedom of expression in a country where it is allegedly guaranteed.
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