If you’ve read one of our earlier posts, Lingo 101, you already know what a trademark is. And if you are reading this article, I am reasonably confident that you are familiar with domain names. For the sake of this discussion, let's define a trademark as a sign, word, or phrase that distinguishes the goods or services of one party from those of another, and a domain name as a distinctive address that identifies websites on the internet, similar to the street address of your virtual storefront.
It is common for a company's trademark to correspond with its domain name. This is an obvious choice as it enhances brand identity and is easy for customers to remember. However, complications arise when another party registers a domain name that includes your trademark, which leads to several issues. Fortunately, there are various avenues available to resolve such disputes other than the obvious legal action route for trademark infringement. This post will focus on domain name disputes specifically within the .za domain space in South Africa.
In South Africa, trademarks receive protection under the Trade Marks Act, which grants exclusive rights to their owners. Registering your trademark is crucial to establish and safeguard these rights. However, owning a registered trademark does not automatically guarantee ownership of the corresponding domain name. Domain name disputes can occur when someone registers a domain name that incorporates or closely resembles an existing trademark. This can cause confusion among consumers and potentially harm the reputation and business interests of the trademark owner. Therefore, it is essential to address these disputes promptly to protect intellectual property and maintain fair competition.
The South African Institute of Intellectual Property Law (SAIIPL) is an accredited dispute resolution provider for .za domain name registrations. SAIIPL follows an Alternate Dispute Resolution (ADR) procedure where any concerned party can lodge a complaint against a co.za domain if the domain name "takes unfair advantage of the rights" of that party or "is contrary to law or likely to give offense to any class of persons." This encompasses cases where domain names incorporate registered or unregistered trademarks, as well as those involving abusive or offensive registrations.
Abusive registrations occur when individuals or entities intentionally register domain names in bad faith to exploit the rights of others or cause harm. Examples include cybersquatting, where someone registers a domain name with the intent to profit from the established reputation of another's trademark. Offensive registrations involve domain names that violate the law or are likely to offend specific groups of people. Such registrations can encompass hate speech, racial slurs, or explicit content. Not only do these registrations breach ethical standards, but they can also lead to legal consequences.
The ADR procedure takes place entirely online and typically concludes within 2 to 3 months. Both the complainant and the registrant have the opportunity to present their arguments, and an appointed adjudicator delivers a decision within 14 days of being appointed. The resolution may involve the transfer or cancellation of the disputed domain name.
Trademark protection and resolving domain name disputes are integral to safeguarding intellectual property and maintaining brand integrity. In South Africa's .za domain space, the SAIIPL serves as an accredited dispute resolution provider, offering an efficient ADR procedure to address domain name conflicts, including those involving abusive or offensive registrations. By utilizing this process, trademark owners can uphold their rights and ensure a fair and secure online business environment.
So, if you ever find yourself wondering what to do with that pesky domain name using your trademark without your permission, we are just an email or telephone call away.
This article was written by Bianca Mynhardt who is primarily involved with trademark prosecution and litigation at Hahn & Hahn. For more information on trademarks and domain disputes, please contact the writer at [email protected].