How Effective is the Domain Name Dispute Procedure?

If somebody registers a domain name and you think that he is abusing your intellectual property rights by doing so, you can bring an application in terms of the procedure and the adjudicator can order that the domain be transferred to you.

Source: Andrew Marshall

© Marshall Attorneys 2008. Please see their website at www.marshall.law.za for more information.

I recently attended a conference on the alternative dispute resolution (ADR) process set up for the .co.za namespace. The conference was organised by the South African Institute of Intellectual Property Lawyers (SAIIPL), one of the providers of adjudication services. It was very interesting to see how the procedure, which was only launched in April of last year, has been put into operation, and the results of the two dozen or so disputes that have been through the system.

The alternative dispute resolution procedure was set up to allow for the easy resolution of conflicts arising out of the registration of domain names. If somebody registers a domain name and you think that he is abusing your intellectual property rights by doing so, you can bring an application in terms of the procedure and the adjudicator can order that the domain be transferred to you.

Some interesting statistics emerged:

Of the 15 disputes that have been adjudicated, 11 were successful (resulting in transfer of the domain name), and 4 were unsuccessful. Of the cases where the registrant (the person who has registered the domain name) opposed the application, five were successful and five were unsuccessful. Interestingly, in every case where the registrant did not oppose the case, the registrant lost. The procedure has not been running for long enough to allow us to distil clear patterns in the more subtle aspects, but it is clear that the most important lesson to be drawn from the statistics is that if you hold a domain name and someone brings a procedure under the ADR against you, you must oppose it. All of the registrants who failed to oppose an application lost.

So how do you enforce your rights using this procedure if you feel that your trademark or business name has been abused by someone registering a domain which is similar to it?

To be successful, you have to show the following:

  1. That you have rights in a name or trade mark;
  2. That the name or trade mark is similar or identical to the domain name complained of; and
  3. That the domain name in the hands of the Registrant is an abusive registration.

That brings us to the question of when a registration is an abusive registration. This is defined as where the domain name in question is:

  1. registered or acquired in a manner that, at the time when the domain name was registered or acquired, took unfair advantage of or was unfairly detrimental to your rights OR
  2. has been used in a manner that was unfairly detrimental or took unfair advantage of your rights.

For a list of domain name disputes adjudicated so far, take a look at the SAIIPL website at: https://www.domaindisputes.co.za/content.php?tag=6