Woolworths' lovebirds held for ransom
 Yuppiechef, a supplier of premium kitchen utensils, saw this opportunity and pounced. The typographical error inspired Yuppiechef to creatively kidnap the campaign, with their tongue firmly in their in cheek. Yuppiechef registered the domain name www.woolieslovebird.co.za itself, and held it for ransom. Shortly after registering the domain name, they delivered the following ransom note to Woolworths:  Instead of dispatching its lawyers, the avant garde retailer not only met Yuppiechef’s demands, but exceeded them. It responded on Yuppiechef’s blogsite (blog.yuppiechef.com) with the following post: “Guys, we have been so love bust, this absolutely flew past us and we are lucky it has been caught by such a great cause. So we will not only match the R5000 in donations, we will up it by a further R2 500.” Touché! Although both sides engaged in charitable banter and showed their lighter sides, this fun example does illustrate the real dangers that brand owners and marketers face when dealing with cybersquatters, ambush marketeers and infringers who spot similar opportunities. Taking domain names and advertising campaigns hostage gives rise to several grounds for legal recourse, including an objection in terms of the Electronic Communications and Transactions Act 25 of 2002 (ECTA) and its Alternative Dispute Resolution Regulations (ADR Regulations), a complaint to the Advertisings Standards Authority of South Africa (ASA) under the Advertising Code, and actions based on trade mark infringement and/or passing-off. Victims of domain name “kidnappings” may lodge an objection with an accredited dispute resolution provider in terms of ECTA and the ADR Regulations on the basis that the registered domain name is either ‘abusive’ or ‘offensive.’ An abusive registration is a domain name which was either registered or used in a manner which takes unfair advantage of, or is unfairly detrimental to, the complainant's rights. An offensive registration, on the other hand, is a domain name in which the complainant cannot necessarily establish rights, but the registration of which is contrary to law or is likely to offend. Complaints may be lodged with an accredited Dispute Resolution Provider, such as the South African Institute of Intellectual Property Law (SAIPL). The ADR Regulations provide for a quick and efficient manner in which to dispose of abusive domain name registrations, with complaints usually resolved within 2 to 3 months. Although Yuppiechef’s registration of www.woolieslovebird.co.za was intended to be humorous rather than abusive, Woolworths’ rights under ECTA remain intact. Ambush marketing refers to any marketing tactic whereby a trader aligns themselves with the publicity or advertising goodwill attaching to any event or marketing campaign of another, without having any real or legitimate association with that event or campaign. Section 8 of the ASA Code states that advertisements may not take advantage of the advertising goodwill relating to the trade name or symbol of the product or services of another, or advertising goodwill relating to another party’s advertising campaign or advertising property, unless the prior written permission of the proprietor of the advertising goodwill has been obtained. Yuppiechef’s registration of the domain name www.woolieslovebird.co.za, and use thereof to promote themselves, fell within the ambit of this provision, which could have entitled Woolworths to lodge a complaint with the ASA. If Yuppiechef were to use the domain name www.woolieslovebird.co.za in trade, it would also have been liable for trade mark infringement and passing off proceedings. The marks WOOLWORTHS and WOOLIES are both registered and well-known trademarks in South Africa. Woolworths enjoys the exclusive right to use these marks in respect of an array of goods and services, including retail and marketing services. Due to the prominence of the WOOLIES mark, Woolworths can also prevent other aspiring brand-hijackers from using its marks (or similar marks) in respect of any goods or services, provided that such use is likely to take unfair advantage of or be detrimental to the repute of distinctiveness of Woolworths’ mark(s). The common-law action for passing-off protects the reputation which Woolworths enjoys in its Lovebirds campaign and the domain name associated with it. Trying to align or attach yourself with that reputation (by, for instance, appropriating and using a similar domain name) may invite an action for passing-off. On these bases, Woolworths could have opted for an interdict restraining further use of the marks WOOLIES and WOOLWORTHS against Yuppiechef, together with the cancellation or transferal of the domain name, and possibly an order for the payment of damages and legal costs. But fortunately, in our tale, Woolworths buried the hatchet and responded in good spirit. Woolworths agreed to match, rand for rand, every donation made by Yuppiechef bloggers to the charity Soil for Life, with an additional donation for extra measure of R2500. No lovebirds were harmed. On a more serious note though, it is important for trade mark owners and advertisers to ensure the proper and early registration of their domain names, trade marks and advertising slogans to avoid falling prey to opportunistic competitors or ambush marketeers. Contact us if we can assist in advising you on appropriate domain name or trade mark protection for your products, services or campaigns. |
||
| 9/06/2012 | ||
|
The firm practises directly in several Southern African countries and through long-established associates in others.
