Domain Name Disputes
What is a Domain Name?
A domain name represents an Internet Protocol (IP) source such as a server address hosting a website, or the website itself. The registration of a domain name is usually administered by domain name registrars who sell their services to the public. Internet hosts use domain names as identifiers, or hostnames which appear as Uniform Resource Locators (URLs) for Internet resources such as websites (e.g. http://www.smitvanwyk.com).
Domain names provide easily recognizable and memorizable names to Internet Protocol (IP) addresses. Domain names are often referred to as domains and domain name registrants are referred to as domain owners. The domain name registration does not confer any legal ownership of the domain name, only an exclusive right of use. The use of domain names in trade may subject them to trademark law.
Domain Names vs Trademarks
It is common practice for a business to register its trademark as a domain name in order for the public to easliy identify the website and relate the name with the brand. Unfortunately domain names are registered on a “first come, first served” basis, so the trademark owners' domain name might have already been registered to another user.
Trademark Owners' Rights
The Alternative Dispute Resolution (ADR) procedure, offers trademark owners a more efficient and cost effective procedure against the registrant of a disputed domain name. The dipsuted domain name registrant must submit to the ADR proceedings if a complainant can show:
- It has rights in respect of a name or trademark: The rights which a complainant is required to have in respect to a name are not limited to registered trademarks, but also include intellectual property, commercial, linguistic, religious and personal rights protected under South African law.
- The mark is similar to the domain name in question: A domain name will be similar to a trademark if it contains words or letters that might confuse internet users to thinking they are visiting s website related to the trademarked brand.
- The domain name is abusive: A domain name will be abusive if it is being used in a manner which takes unfair advantage of, or is unfairly detrimental to the complainant or trademark owner’s rights.
How to File for Domain Name Disputes
The South African Institute for Intellectual Property Law (SAIIPL) is an accredited dispute resolution provider and adjudicates domain name disputes for the South African .co.za domains. Once a dispute has was filed with SAIIPL by the trademark attorney, the registrant of the domain name is afforded 20 days to file a response with SAIIPL. Thereafter, the complainant should file a reply to the response within 5 days from receiving same.
Within 2 days after this period, an adjudicator will be appointed. Adjudication is done on documentation submitted and the adjudicator must reach a decision within 14 days after being appointed. A domain name dispute can therefore be concluded within approximately 6 weeks.
The complaint will either be refused or the registrant will be ordered to transfer the domain name to the complainant. It is also possible to seek cancellation of the domain name. However, under the UDRP, either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution.
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