Cyber squatters: 0 Brand owners: 1
11/09/2007

The very first case in which a cyber squatter was ordered to transfer a .co.za domain name to a South African brand owner has just been handed down. The complainant was Telkom SA Limited. The domain name was registered on 4 September 2006, shortly after the announcement by Telkom Media (Pty) Limited, a subsidiary of Telkom SA Limited that it intended to apply for a satellite television subscription broadcasting licence from the Independent Communications Authority of South Africa. This announcement received wide media attention at the time.

The domain name was registered by a local close corporation, Cool Ideas 1290 CC. The domain name resolved to a website that stated "this website is coming soon".

The domain name came to the attention of Telkom Media, when it wanted to register the domain name in January 2007.

The complaint was submitted to the SAIIPL, an accredited ADR Service Provider on 24 May 2007 and the decision was handed down on 13 July 2007. Telkom submitted evidence of its trade mark registrations for TELKOM, the earliest of which dated from 1991. It also submitted evidence of its extensive use of the trade mark TELKOM, amongst others that TELKOM is one of the 10 top best-known brands in South Africa.

The adjudicator ruled that Cool Ideas had registered the domain primarily to block the registration of the name by Telkom and furthermore that it intended to disrupt the business of Telkom and Telkom Media with this registration. The adjudicator ruled that the domain registration was made in bad faith to prevent Telkom from exercising its trade mark rights.

Cool Ideas had submitted incomplete contact details in the WHOIS database. The adjudicator referred to foreign decisions and ruled that this was a further indication that the domain registration was made in bad faith. He ruled that the domain name was an abusive registration and ordered the transfer of the domain name.

Four cases have already been filed with the SAIIPL DomainDisputes.co.za service. One case has been settled and one case is still pending.

The latest ruling sends a clear message to cyber squatters to refrain from registering well-known brands in their own names. The days of brand owners paying exorbitant amounts to cyber squatters are hopefully now something of the past.

Featured Act Design regulations The Minister of Trade and Industry has, by virtue of the powers vested in him in terms of Section 54 of the Designs Act, 1993 (Act no. 195 of 1993), made the following regulations and, with the concurrence of the Minister of State Expenditure, prescribed the matters in respect of which fees shall be payable and the tariff of such fees as set forth in Schedule 1 hereto. Download act   Featured Case Law Domain Names – The early bird (usually) catches the worm VELCRO USA Inc, the complainant, is the proprietor of various registered trade marks for the mark VELCRO in various territories in respect of “loop and hook fasteners” The respondent, a competitor in Asia for several years, registered the domain name china-velcro.com to which the complainant objected. As a defence, the respondent argued that the mark VELCRO has been used by third parties for several decades to describe ”loop and hook fasteners” and has become generic.   Related People Mariëtte du Plessis Partner Trade Mark Attorney Tel: +27 (0) 12 432 6378 Email me