Trade Mark Services

Domain name Disputes

As domain names are registered on a “first come, first served” basis, a trade mark owner may find that its trade mark has already been allocated to another Internet user. P

Previously, in these cases, the trade mark proprietor had to resort to instituting civil litigation based on trade mark infringement or passing off.

The new Alternative Dispute Resolution (ADR) procedure, however, offers trade mark owners a more efficient and cost effective remedy against the registrant of a domain name.

A person who registered a domain name must submit to the ADR proceedings if a complainant can show, on a balance of probabilities, that:

1. It has rights in respect of a name or a mark;
2. The mark is similar to the domain name in question; and
3. In the hands of the registrant, the domain name is an “abusive registration.”

The rights which a complainant is required to have are not limited to registered trade mark rights, but include intellectual property rights, commercial, linguistic, religious and personal rights protected under South African law, and is not limited thereto.

A domain name registration will be abusive if a domain name, which was registered or acquired, alternatively is being used in a manner which takes unfair advantage of, or is unfairly detrimental to the complainant’s rights.

The South African Institute for Intellectual Property Law (SAIIPL) http://www.saiipl.org.za is an accredited dispute resolution provider and adjudicates most domain name disputes in the .co.za domain.

Once a dispute has was filed with SAIIPL and has commenced, the registrant of the domain name is afforded 20 days to file a response with SAIIPL, who will forward the response to the complainant. Thereafter, the complainant may file a reply to the response within 5 days from receiving same.

If you have rights in respect of a name or mark which has been registered as a domain name by another, contact Smit & Van Wyk to file a domain name dispute.