One year later & going strong - .co.za domain name disputes
17/03/2009

Prior to the enactment of the Alternate Dispute Resolution (ADR) Regulations, the recourse to parties caught up in .co.za domain name disputes, was to institute proceedings in the High Court having jurisdiction.

Proceedings relating to domain names were no exception to the substantially high costs and exhausting lengthy delays associated with High Court proceedings. The enactment of the ADR Regulations in April 2008, allowing for an inexpensive (compared to High Court litigation) and expeditious procedure for dealing with domain name disputes, has been welcomed by parties looking for a quick fix against cyber squatters and unauthorised registrants of conflicting domain names.

The South African Institute of Intellectual Property Law (“SAIIPL”) is one of the dispute resolution service providers accredited by ZADNA, the South African Domain Name Authority. Since its accreditation, SAIIPL has seen 27 domain name disputes lodged for adjudication. Of those 27 disputes, 17 disputes were decided in favour of the complainant and the domain names were transferred to the complainant, three disputes were refused, five were settled, one was appealed and one is currently pending.

Interestingly, the statistics show that approximately 20% of contested cases resulted in the complaint being refused, while 25% of such cases were settled amicably. However, in matters in which no response was filed, 100% of the decisions were in favour of the complainant. As is typical in similar ADR systems, such as ICANN’s UDRP system, a large number of complaints have been uncontested.

The fee for lodging a dispute with SAIIPL is R10 000 for a single adjudicator and R24 000 for three adjudicators. The complainant has an election on the number of adjudicators required for adjudication. So far, all the disputes before SAIIPL have been adjudicated by a single adjudicator. Disputes that are appealed are adjudicated by three adjudicators.

In one of its most recent decisions, SAIIPL handed down a decision in favour of Sun International (South Africa) Limited (“Sun International”), in relation to the domain name suncityshuttle.co.za, despite a response being filed by the registrant.

Sun International is the proprietor of 80 Sun City and Sun City variant trade mark registrations. Its Sun City trade marks are well known and have acquired a goodwill and reputation that is associated with Sun International and its business.

The registrant of the domain name suncityshuttle.co.za conducted business offering “shuttle/chauffeur” services to members of the public travelling to and from Sun International’s Sun City Resort. The registrant’s business was advertised on the website under the domain name suncityshuttle.co.za. The website contained information that created the impression of an association with Sun International’s business.

Sun International’s complaint was based on an abusive registration. It alleged that the domain name suncityshuttle.co.za was registered in a way that led people or businesses to believe that the domain name was registered, operated or authorised by or otherwise connected with it. It furthermore argued that the registration of the domain name suncityshuttle.co.za was intended to disrupt unfairly its business and prevent it from exercising its rights.

The registrant contended in response that Sun International was, at all times, aware of his business and that he rendered services to Sun International. A considerable amount of money had been expended on his business. The success of his business was dependant on the name Sun City Shuttle. It was further contended that the website under the domain name suncityshuttle.co.za promoted the best interest of Sun International and the Sun City Shuttle ensured speedy, efficient and effective transport of guests to the Sun City Resort, thereby promoting the good name of Sun International.

Sun International denied that the services conducted by the registrant were on its behalf or on its mandate. On becoming aware of the registrant, Sun International addressed a letter to the registrant, asking him to de-register the domain name suncityshuttle.co.za. The registrant did not respond or comply. Sun International denied further that the registrant’s success was due to his own effort. It contended that the registrant’s success was derived from deliberate misrepresentation of his business relationship with Sun International.

The adjudicator considered the evidence and made the following ruling:

• Sun International proved that it had the relevant intellectual property rights in the trade mark Sun City;
• the registration and use of the domain name suncityshuttle.co.za, having regard to the well-known registered Sun City trade marks, will inevitably lead the public into believing that the registrant is associated with Sun International and it would also take unfair advantage of Sun International’s rights;
• the registrant registered the domain name in such a way that leads people or businesses to believe that the domain name is registered to, operated or authorised by, or otherwise connected with Sun International;
• the registrant’s submission that the website promotes the best interests of Sun International carries no weight. It is not a defence to a claim of an abusive registration that the use of a domain name for the purposes of a website will benefit the complaining party. An abusive registration begins with the registration of the domain name in itself;
• the adjudicator ordered that the domain name suncityshuttle.co.za be transferred to Sun International.

The suncityshuttle.co.za domain name dispute was Sun International’s second victory with domain name disputes lodged with SAIIPL. In November 2008 Sun International took transfer of the disputed domain name suncityvacation.co.za following a decision by SAIIPL in its favour.

The ADR Regulations have so far proven to be an efficient and effective means of dealing with domain name disputes. The regulations extend the recourse available to proprietors of trade marks or persons with relevant rights disputing or defending domain name registrations.
Somayya Khan
Partner
somayya-k@adamsadams.co.za
Adams & Adams