FIFA’s first South African domain name victory

FIFA secured a transfer of the domain name fifa.co.za after it successfully objected to the registration of the domain name in the name of X Yin (“the Registrant”), by lodging a complaint with the South African Institute of Intellectual Property Law, the recently accredited alternative dispute resolution provider for domain names in the .co.za name space.

FIFA objected to the registration of the domain name fifa.co.za as, it submitted, in the hands of the Registrant, the domain was an abusive registration. FIFA contended that, at the time when the Registrant registered the domain name, it took unfair advantage of and was unfairly detrimental to FIFA’s rights, as set out in Section 1(a) of the .ZA Alternate Dispute Resolution Regulations (“the Regulations”). The Registrant filed no response to FIFA’s complaint.

The Registrant’s domain name fifa.co.za was initially linked to a commercial website which bore many of FIFA’s trade marks (including FIFA, 2010 FIFA WORLD CUP and 2010 WORLD CUP SOUTH AFRICA). It published articles and discussions about FIFA and the future Soccer World Cup in South Africa. However, several apparent hyperlinks on the site exposed its essentially commercial nature.

After FIFA had addressed demands to the Registrant through its attorneys, requesting him/her to cease use of its trade marks, the domain name was then linked to a “Freeplus website, which appears to be a website builder”. The Registrant, however, refused to surrender the domain name.

In assessing whether or not the domain name was an abusive registration, the Adjudicator was of the view that the nature of the “abusiveness” as contemplated by the Regulations does not require a positive intention to abuse the Complainant’s rights, but that abuse was the effect of the use or registration of the domain name.

The Adjudicator looked to Section 4(1) of the Regulations, which sets out circumstances which could be considered to be indicative of an abusive registration, and held that, inter alia, the Registrant’s initial use of the domain name did not indicate an intention primarily to block FIFA or disrupt its business, nor was there any evidence that the domain was acquired to gain valuable consideration on the sale or transfer thereof, or of the Registrant having been involved in a pattern of making abusive registrations. The registration was therefore not considered an abusive registration in terms of Section 4(1)(a).

However, Section 4(1)(b) of the Regulations states that:

“4.(1) Factors, which may indicate that the domain name is an abusive registration include:

(b) circumstances indicating that the registrant is using, or has registered, the domain name in a way that leads people or businesses to believe that the domain name is registered to, operated or authorised by, or otherwise connected with the complainant; ”

In the Adjudicator’s view, the quasi “official” nature of the initial site, which included much use of FIFA’s trade marks and reference to FIFA, could well indicate such an association. 

In deciding whether the registration was likely to take unfair advantage of or be detrimental to FIFA’s rights, the Adjudicator questioned whether there was the requisite quality of “unfairness”, and was guided by the dicta in Laugh It Off Promotions CC v SAB International (Finance) BV 2005 (2) SA 46 SCA and Laugh It Off Promotions CC v SAB International (Finance) BV and another 2006 (1) SA 144 CC.

However, the Adjudicator considered that, “given the infinite proportions of [a domain name’s] use (and abuse)”, demonstrating a likelihood of substantial economic detriment (as required by the Constitutional Court in Laugh It Off) cannot be the sole standard for assessing unfairness in the context of domain name disputes.

The clear intention of the Registrant to continue to exploit the advantage to be gained through use of the FIFA trade mark in a domain name was apparent from correspondence, where the Registrant, in refusing to delete the domain name, had stated:

“I will make another site. Don’t worry, there are lots of staff abbreviate as FIFA in the world” (sic).

The Registrant had expressed a determination to retain the domain by using it in any context that would lend some sort of legitimacy to its use. This, the Adjudicator found to be unfair.

The domain name was thus held to be an abusive registration and the Adjudicator ordered that fifa.co.za be transferred to FIFA.