Trademark Law And Cyber Law
Definition Of Terms
A general overview of the terms to be used in this dissertation and the alternate meanings assigned to terms in the field of cyber law and Internet based usage.
- URL – Universal Resource Locator, the complete address of any resource available on the internet, e.g. a website’s location on the Internet that consists of a communications protocol such as hypertext transfer protocol written in hypertext mark-up language, followed by the domain name (second level domain) and ending in one of the general top level domains such as .com/.net/.org. E.g. //www.google.com.
- Website – A location on the Internet containing data generated, sent, received or stored by electronic means.
- Hosting – To serve as host to any number of collections of data.
- Visitor – An Internet user viewing the information contained at a specific domain name’s website.
- WIPO – World Intellectual Property Organisation, an intergovernmental organisation of the United Nations, responsible for the promotion of the protection of intellectual property throughout the world and administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property.
- ICANN – Internet Corporation for Assigned Names and Numbers, a company whose purpose is to regulate domain name and address registrations, formed in 1998.
- Domain name – Alphanumeric identifications for Internet based addresses which identify specific computers or servers connected to the Internet, including IP addresses, ASN and PPP numbers.
- IP – Internet protocol (“IP”) addresses.
- ASN – Autonomous System (“AS”) numbers.
- PPP – Protocol Port and Parameter numbers.
- Browser – A software program used to translate various Internet protocols, enabling a user to view a website graphically.
- Server – A computer which manages large amounts of data resources and provides services to Internet or network visitors or users.
- gTLD – General top level domains, these include dot-com, dot-edu, dot-net and dot-org.
- ccTLD – Country code specific top level domain names, these include dot-co-dot-za, dot-org-dot-za, dot-co-dot-uk etc.
- SLD – Second level domains, such as the words preceding TLD’s, (Yahoo, Google, Amazon)
- Intellectual Property – The concept of ownership of impalpable property resulting from creativity – the work of a person’s intellect or mind.
- Trademarks – A distinguishing symbol, mark, name or feature used by a manufacturer, company or person that no other manufacturer may use unless authorised, as it constitutes intellectual property.
- Whois Databases – (Who-is databases) A database maintained by registries and registrars licensed by ICANN, which contains information about domain name registrations in the top-level domains (dot-com, dot-net, dot-org, dot-edu, country codes such as dot-co.za). Effectively a directory of who the registered owner of a domain name is as well as other necessary information needed.
- SAIIPL – The South African Institute for Intellectual Property Law, leading law firms, practitioners and academics in the field of Intellectual Property, and by extension, Information and Communications Technology law.
This dissertation looks at the differing ways in which the phenomenon of cybersquatting and typosquatting is dealt with internationally, and how the South African legislator is faring at maintaining a standard of control and legislative remedy, comparable to that of our international neighbours. The focus will be on the legislative process and remedies as practiced in South Africa, the United States of America and the United Kingdom in combating the phenomenon of cybersquatting and typosquatting.
This particular field of ‘cyber’-practices has many derivatives and correlations to other forms of infringement issues, such as tarnishment, cybergriping, dilution, parody and meta tag deployment. Due to the nature of this dissertation, and the vast amount of information and arguments available on these issues, I will be limiting the research to domain name registrations that correlate to existing trademarks, and possibly misspelled or alternatively formatted trademark names. Issues such as cybergriping or parody registrations etc. will not be specifically covered within the scope of this dissertation.
What does cybersquatting and typosquatting entail and why the need to regulate it by way of an international standard?
Tammy Alexander writes:
“Domain names are a hot commodity … The rise in domain name commerce has resulted in an abundance of frauds targeted towards acquiring domain names from legitimate owners. Some of these methods are legal, others are not…”
To briefly summarize, cybersquatting and typosquatting entails the registration of unique web-identities (URL’s/domain names), linking to a website that may possibly be sought after by another party to which the web-identity’s incorporated trademark or business name in truth relates.
Ebersöhn explains the term cybersquatting, as the registration of someone else’s trademark or business name as a domain name for the purpose of making a profit off the domain by selling it back to the proprietor of the trademark or business owner; or, the registration of the unique domain for the purpose of preventing the “true” owner from being able to use it, for malicious or competitive reasons.
This is done by registering the domain name www.ipod.co.za before Apple Inc.; the company to whom the iPod registered trademark belongs; gets a chance to expand their Internet based services to a South African “.co.za” domain, for example. In turn this domain address may host information about iPod’s so as to seem related to the trademark or business name it assumed, using the popularity of a well known trademark or business name to draw Internet users to visit the website, generating income by way of hosting electronic advertisements.
Alternatively, one might exploit ownership of the domain name by informing Apple Inc. of one’s ownership and then request a great sum of money to sell back what is essentially their own trademark or business name to them.
In a recently decided case, for example, the URL’s www.jenniferlopez.net and www.jenniferlopez.org were registered by a web operator, Jeremiah Tieman, based in the United States, which used the American singer and actress’ name for commercial profit by hosting electronic advertisements on the domains. A ruling by an independent arbitrator of the World Intellectual Property Organisation (WIPO), ordered that the ownership of both these domain names be transferred to the Jennifer Lopez foundation, along with the income generated through paid advertisement hosting.
In his paper on cybersquatting, Ebersöhn discusses the problem systematically to determine that cybersquatting in all its forms results in consumer fraud and public confusion to the point of passing off as the original trademark, or by making the consumers believe that the website is either related to or endorsed by the proprietors owning the used trademarks.
This practice deprives proprietors of revenue, results in costly law suits and legal affairs, creates a burdening obligation on trademark proprietors to monitor the Internet for possible misuse or misrepresentation of their various trademarks and may in some instances result in the tarnishing of a proprietor’s trademark, as the linked websites may contain defamatory or otherwise negative content that detracts from the goodwill of the trademark.
The other form of infringement, typosquatting, mostly entails the same principle, as it is a form of cybersquatting, although instead of using the ‘original’ well known trademark or name, e.g. a phonetic equivalent, or a misspelled name, even if only by different representation, is used to intentionally lure and mislead visitors to use the site.
In typosquatting, one registers a common misspelling or phonetic equivalent of another’s trademark with the intent of attracting Internet users to one’s website when they search for the original trademark proprietor’s website. The term was coined by Zuccarini to describe his practice of registering domain names from common misspellings made by Internet users.
Should a user accidentally enter an incorrect domain name, they may be led to an alternative website owned by a cybersquatter. This practice has uses such as passing off as the ‘real thing’, causing confusion or even be defamatory. Numerous cases have been heard on this specific form of cyber-infringement on a known trademark or property.
According to ICANN, in order to reach another person/point/computer/node on the Internet one has to type an address into a network browser program, being either a name/word/phrase or a number (e.g. www.ipod.co.za or 184.108.40.206). The requirement for registration is that this address must be unique so computers and servers linked through the Internet ‘know’ where and how to find each other, almost like a fingerprint for computers.
ICANN, the Internet Corporation for Assigned Names and Numbers, is an international non-profit organisation, coordinating unique identifiers across the world, usually relating to general top level domains (gTLD) such as dot-net/dot-com/dot-org. Without this coordination we would not be able to maintain one global Internet network.
It is these unique identifiers, commonly known as Domain Names and Internet Protocol (IP) addresses, that are being used and registered increasingly often as the Internet becomes a more widely accepted platform for business use and the generation of income. It is the registration process of using trademarks or business names in these ‘addresses’ that leads to the phenomena of cybersquatting and typosquatting.
It is clear that cybersquatting and typosquatting both pose a real invasion and infringement on proprietors’ intellectual property, even though numerous systems exist to regulate their registration and use, differing from state to state, domain to domain, and in some states the criteria for legal protection to be founded, which may result in excluding the true proprietors from having a legal remedy.
It is therefore generally accepted internationally that cybersquatting and its various forms are condemned as illegal practices.
What Is A Trademark?
The main purpose of trademark law is to prevent confusion in the mind of a consuming public with regards to the source of goods or services rendered by a specific merchant or proprietor, to the extent that the distinguishing “mark” of such goods or services is protected from unauthorised use by another.
The Merriam Webster dictionary defines a trademark as follows:
- a device (as a word) pointing distinctly to the origin or ownership of merchandise to which it is applied and legally reserved to the exclusive use of the owner as maker or seller.
- a distinguishing characteristic or feature firmly associated with a person or thing.
A trademark is defined in US law, under section 1127 of Title 15 of the United States Code as:
“Any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others; and to indicate the source of the goods, even if that source is unknown”
In South African Legislation, the Trademarks Act defines a mark as follows:
“’Mark’ means any sign capable of being represented graphically, including a device, name, signature, word, letter, number, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”
And the act defines a trademark as follows:
“‘Trademark’, other than a certification trademark or a collective trademark, means a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person”
It is clear then, that where a mark is used; whether it is a word, symbol or device that is recognisable and distinguished indicating the goods or services of the “proprietor” thereof; this mark should be afforded a measure of legal protection for its proprietor.
When used to distinguish one’s services or goods, a domain name should then also be afforded the same measure of protection as the traditional trademark would receive.
As the Internet becomes more and more accessible to the public, the business value of having a presence on the Internet or conducting trade by means of Internet resources, traditional trademarks will soon find equal counterparts in representing domain names.
It is because of this, that cybersquatters and typosquatters have emerged to capitalise on the uncharted marketplace that has become the Internet. Unfortunately, legislators could not have foreseen all the possible loopholes and shortcomings that the Internet and electronic communication technology would bring to the existing remedies and governance provided by the traditional legislation at the time.
Cyber law, in context, can therefore be described as the area of law that seeks to adapt and extend the traditional reach and operation of legislation, to better govern, define and protect interactions on a “cyber-plane” where information and communications technologies provide the golden thread that is the common divider between these interactions.
My Aim With This Dissertation Is:
- To research the correlations and differences between South African and selected International legislation, whether from non-profit regulatory authority, legislative authority or internationally operating authority on:
- The qualification and definition of domain names as trademarks;
- The legal protection offered for domain names;
- The legal impact of cybersquatting and typosquatting on trademarks; and
- The resolution of domain name disputes.
- To critically analyse the effect of having different standards of legislation for national and international instances on this type of intellectual property infringement.
General Information And International Characteristics
There are numerous International bodies that help to regulate aspects of the Internet, for instance, with the registration of domain names, the main governing body is the Internet Corporation for Assigned Names and Numbers. ICANN licenses Registries to allocate domain names. Registries in turn license Registrars to register domain names.
Icann -> Registry -> Registrar -> Registrant
The registry is an entity that receives domain name service information from the registrars on newly registered second level domain (SLD) names in a specific top level domain (TLD) space. This information then gets added to a central database, from where it is spread via zone files, and gets accessed by domain name servers and application browsers.
Zone files contain information pertaining to a portion of the domain name space of a specified TLD. The zone file is used to match the registered domain names with Internet protocol numbers such as 192.169.0.001. The data describes the domain name, the ‘name server name’ associated with that domain name, and the IP address for the associated name servers.
The registrar is the contracting party that provides a domain name registration service to the ‘public’ customer or domain name registrant. The registrar keeps a database of its customers and their relevant information, as well as the domain name server information. The registrar processes domain name registrations for the individual or company who wishes to create a new domain name, and sends this information in the necessary format to the registries, who keep the information in a centralised database and finally seeding the information over the globally connected Internet network. In South Africa the registrar is UniForum SA.
From here on any Internet user with access via a browser can visit the domain name and access the website’s information once it is listed and registered.
The registrant or end user is the other party to the contract concluded during domain name registration. A registrant can be an individual, closed corporation or even a company. The registrant holds the right to use the domain name for a specified period, provided that the fees are paid, and contractual conditions are met. The contract between the registrar and the registrant is the Domain Name Registration Agreement, and the registrant agrees to be bound by the terms of this agreement.
Registries and registrars are obliged to maintain an accessible and user-searchable database service of the specific data in their charge. These databases are called whois (who-is) databases. The registry’s whois contains all second level domain names registered in its specific top-level domain space. The service is available to anyone and contains data pertaining to the domain name, the registrar, the URL, the name server, the date of creation, and the status among other things.
Each registrar is also obliged to keep a whois database on its specific registrations. The registrar’s whois database contains information on the networks, organisations, domain names and associated contacts in the top level domains and the necessary protocol (Internet/computer language) needed by a browser to translate and access the information located at the specific domain name address, for instance file transfer protocol or hypertext mark-up language. It also holds information such as the registrant’s contact details, telephone numbers, postal addresses, e-mail and fax numbers where applicable. This information becomes necessary particularly where a domain name dispute arises and the respondent party’s particulars are needed to proceed with legal action.
So when an individual or business wishes to register a domain name, it is done via a registrar-registrant contract with a registrar. All domain names are licensed on a first come, first served basis.
Icann Mission Statement:
“The mission of The Internet Corporation for Assigned Names and Numbers (“ICANN”) is to coordinate, at the overall level, the global Internet’s systems of unique identifiers, and in particular to ensure the stable and secure operation of the Internet’s unique identifier systems
ICANN also allows for a dispute resolution process whereby a trademark owner may receive a transfer of a registered domain name from the registrant if certain conditions are met. ICANN states that disputes must be resolved using the Uniform Domain-Name Dispute-Resolution Policy. This requires the applicant for transfer to resolve the issue with the registrant by agreement to transfer, dispute in court, or arbitrate via an intermediary. A registrar will then be allowed to cancel, suspend, or transfer a domain name to the plaintiff/applicant.
To invoke the policy, a trademark owner should either file a complaint in the court that holds proper jurisdiction, against the registrant or in case of abusive registration, such as cybersquatting or typosquatting; submit a complaint to an approved dispute-resolution service provider such as WIPO.
Another international organisation that has an impact on disputes in relation to domain name registration, is WIPO, the World Intellectual Property Organisation, a United Nations agency based in Geneva. WIPO concerns itself with intellectual property rights, and therefore also with registered domain names and the various incorporated business names and proprietary trademarks that they contain.
WIPO was established by the WIPO Convention in 1967 as an international organisation with a mandate from its member states to promote the protection of intellectual property throughout the world via cooperation among states in collaboration with international organisations.
WIPO has an Arbitration and Mediation Centre which provides dispute resolution services as a means of resolving domain name disputes between parties that have a legitimate interest in the domain name.
Independent adjudication by trademark specialists from over different countries is made available to assist with the dispute resolution process. However, being an international organisation, they do not have the jurisdictional power to make any decisions that are binding as precedents, and each case is decided on a case-by-case basis.
The adjudication procedure was intended to resolve abusive registration of trademarks and known business names as domain names by parties who are not the original proprietors.
For a concerned party to have ‘locus standi’ it will have to show that the disputed registered domain name is identical or confusingly similar to its trademark, that it was registered by the registrant in “bad faith” and that that the registrant has no true legitimate interest in the name.
Incidentally, this process is very similar to how the different states consider whether any other form of trademark infringement has been perpetrated.
Usa Federal Legislation
The legislation adopted in the United States of America is of significance as USA is one of the five primary members of the United Nations and its legislation model has a great impact on such international organisations as WIPO or ICANN.
A trademark is defined in US law, under section 1127 of Title 15 of the United States Code as:
- any word, name, symbol, or device, or any combination thereof;
- used by a person;
- to identify and distinguish his or her goods;
- from those manufactured or sold by others; and
- to indicate the source of the goods, even if that source is unknown.
Therefore, for mark used in the registration of a domain name to be regarded as a trademark, it has to be distinguishing, identifying the goods or services of its owner. Also, the owner will have to prove ownership of the mark, by showing that they were the first person to use the mark for this purpose, and have continually used it in commercial use over a certain period.
The United States Code regulates trademark infringement in Title 15, Chapter 22, Subchapter 3, and Section 1114(1):
“(1) any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive” shall be guilty of trademark infringement.
Furthermore, the United States also implemented the Anti-Cybersquatting Consumer Protection Act. With this act the application of statutory trademark infringement provisions and trademark dilution acts are extended so as to be more effectively applied to cases of cybersquatting in its various forms. It also provides for in rem actions to applicants in certain circumstances.
Cited as Section 1125(d) under Title 15
“(d) Cyberpiracy prevention
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) Has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) Registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark”
The Anti-cybersquatting Consumer Protection Act is a piece of federal legislation brought into effect on the 29th of November 1999. The main use thereof is to help legitimate trademark owners to get relief when domain name registrants obtain trademark-related domain names in “bad faith” that are in truth identical, or confusingly similar to a trademark or well known/famous commercial mark.
Remedies are available on the facts that a domain name is identical, confusingly similar or even dilutive to the proprietary mark.
Being of a dilutive nature basically means that the domain name in some way damages or subtracts from the original mark, or causes the capacity of the original mark, to be distinguishing and characteristic of a proprietary owner’s goods or services on the Internet, to decline.
This aspect has been dealt with by the courts in such cases as Avery Dennison v Sumpton, Intermatic Inc. v Toeppen and Panavision v Toeppen.
“Cybersquatting dilution is the diminishment of ‘the capacity of the marks to identify and distinguish the goods and services on the Internet’.”
The courts needed to decide whether the trademarks incorporated in domain names were registered by the ‘cybersquatter’ for “commercial use in commerce” as is contained in section 1125(c)(1) of the federal law, and secondly whether trademark dilution was likely to occur as a result of the domain name registry.
The court found in Toeppen’s cases that he did intend the domain names for commercial use in commerce as he registered the names with the intent of selling them back to the original proprietors once they wanted to obtain ‘their’ trademarks as Internet websites.
The court also found dilution to be present as the company Intermatic was not free to use their unique name to sell or advertise their goods or services on the Internet as Toeppen held the ownership of the domain name and the trademark’s effective use of helping consumers differentiate Intermatic’s goods or services on the Internet was thereby diminished.
The court also found in the Panavision case that cybersquatting on a well known trademark curtails the proprietor’s right to exploit the value of their registered trademarks on the Internet. If the proprietor is then forced to register their trademark under a slightly different name, or if a consumer were searching for the proprietor’s goods on the Internet, they would have to wade through all the different domain names registered on the Internet to find the website that in truth holds the products or services the consumers were looking for. This fact assisted the courts decision in finding that trademark dilution is inevitable if cybersquatters were allowed to register trademarks belonging to original proprietors.
Many similar court cases have since been heard and it is clear that the courts have ruled distinctively that if a domain name is registered for the purpose of selling the domain name to the owner of the identical or similar trademark, that use constitutes commercial use in commerce and further constitutes an infringement of the Anti-Cybersquatting Consumer Protection Act.
These practices are also a form of trademark dilution, and in effect diminish or tarnish the trademark’s goodwill value among its consumers. In the case of typosquatting, the same principle is employed to show that the domain name is confusingly similar to the trademark, and causes a form of trademark dilution, lessening the trademark’s ability to distinguish or identify the proprietor’s goods or services to the Internet using public.
Usa’s Method Of Resolution
In accordance with the ACPA a plaintiff must prove that:
- The defendant intends to make a profit from a domain name registration, by using a trademark or famous mark in bad faith.
- The defendant registered, used or traffics in a domain names that:
“(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark”
What is important to prove is that commercial use of, or profit is being made from the domain name and that it is being used or was registered in “bad faith”.
In an online article by Charles Runyan, Ph.D., he discusses the aspects of the ACPA and its implications and implementation. in determining if a defendant has acted in bad faith. The ACPA also includes some guiding factors, inter alia:
- Whether the defendant holds any trademark in, or intellectual property pertaining to the domain name related trademark, or well known mark;
- To what extent the domain name is similar to the existing trademark, and if the domain name in some way distinguishes the domain-registrant for any website related goods or services;
- If the defendant has any intention of using or employing the website for any bona fide rendering of goods or services; and
- Whether or not the registered domain name in any way poses a threat to divert Internet users from the mark proprietor’s website to any other website to the extent that trademark dilution may occur (such as with typosquatting practices).
The element of bad faith must show that the registrant in some way had knowledge that the practice was in fact unlawful, or that the registration of a known mark or trademark was unfair to the proprietor and could result in trademark dilution. A court will not grant relief to a plaintiff if it is found that the defendant lacked this knowledge or acted in good faith when registering the domain name.
Offering to sell the domain name to the proprietor of the trademark, will, in most cases result in the court finding that the registrant acted in bad faith, as was evident in the Toeppen-cases.
Remedies that may be granted by federal courts when deciding a case of cybersquatting or typosquatting include a court order for forfeiture of ownership, or cancellation of the registration of an offending domain name. Transfer of ownership to the legal proprietor of the mark may also be granted.
Where the use or registry of a domain name resulted in damages, section 1117(d) states that a court has discretion to appoint that statutory damages be paid in the amount of no less than $1000, and no more than $100 000 per offending domain name registration.
Zuccarini was ordered to pay $50 000 for each of five domain names that he registered in bad faith, the domain names being confusingly similar to those of the original mark.
He registered five spelling variations of the website joecartoon.com, a site containing various animated java-script based cartoons. Upon visiting the website the visitor would be “trapped on the website, unable to use the browser back function unless they clicked through a mass of online hosted advertisements. The other option was to close down one’s web browser application and start the search process for the true joecartoon.com domain again.
If the domain name registrar whois database contains false information on, or if the registrant simply cannot be found, an ‘in rem’ action for default judgment may be pursued against the registrar or registry that conducted the domain name registration violating a protected registered trademark, or section 1125 of the federal law finds application, and the court finds that through no fault of the plaintiff or lack of due diligence, a defendant could not be found.
Under South African law, no specifically targeted legislation has yet been promulgated, that would deal with cybersquatting or typosquatting, in the same way that for instance, the USA has the ACPA. Though there is quite a bit of legislation, regulations, bills and institutions set in play to help fight the phenomenon.
Pistorius points out that the registration of a domain name may give it a global presence through its accessibility from anywhere in the world via the Internet network, but the intellectual property aspect that seems to cling to domain names as well, is still administered within territorial boundaries and as such, can only be enforced within the consequent jurisdiction of the authorities that govern these boundaries.
Even though registration of domain names as trademarks may be possible, where they lend distinguishing value to a commercial application of the proprietor’s trademarks, the domain name may never become the property of the proprietary owner. At best, one could perpetually licence the use of a domain name for as long as one was operating under the trademark, to give a presence to the services and goods of the proprietor on the Internet.
Due to the possibility of trademark registration for a domain name, Pistorius also comments that in contrast to traditional trademark ownership, a domain name is unique, and can only link to one designated site on the Internet. As such, only one proprietor or company may register and use the domain name, irrespective of the fact that several companies may possibly own an identical trademark.
The Trademarks Act defines a mark as any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”
A trademark is defined as follows:
“Trademark”, other than a certification trademark or a collective trademark, means a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person”
Ebersöhn discusses whether a domain name also constitutes a trademark, and how the Trademark Act applies to the position of known trademarks when they are registered as domain names. Section 34 of the trademarks act deals with the cases where infringement of a trademark in terms of the act is committed.
Where the unauthorized use of a trademark occurs in the course of trade in relation to goods or services, or where an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion is used, this will constitute infringement of the statutory or common law protection of a mark or trademark.
South African law also takes note of the occurrence of trademark dilution, as section 34(1) (c) states that if a trademark is well known in South Africa and the use of an identical or similar mark would likely take unfair advantage of, or be detrimental to the distinctive character or reputation of the registered trademark, notwithstanding the absence of confusion or deception, it would also cause an act of infringement.
One may deduce from the provisions of this act that any person who visits a domain name, believing it to be a product of, be related to or endorsed by a south African trademark proprietor of identical or confusingly similar mark, will qualify the website as an infringing mark. The act does not specifically relate to Internet usage, or to the phenomenon of cybersquatting and its differing forms, but is nonetheless applicable, as one is still dealing with the usage of well known or identical marks or trademarks.
Ebersöhn submits that, as the registration of domain names in all cases require the second level domain name to be followed by a TLD, the domain name and the trademark can never truly be identical, but will still so nearly resemble it as to be likely to deceive or cause confusion, and therein lies the infringement.
In South Africa it is trite law that when dealing with trademark infringement, only the original trademark and the alleged mark may be compared. Therefore, unlike US legislation or court process, the content and existence of a website hosted at a specific offending domain name constitutes an extraneous factor and may not be averred to.
Section 34(3) also provides certain remedies in case such trademark infringement occurs. These remedies include an order for removal of the infringing mark from all material used by the infringing party and, where the infringing mark is inseparable or incapable of being removed from the material, an order that all such material be delivered up to the proprietor can be extended.
Where a domain name is only registered but is never used, as is a classic practice in cybersquatting, the court ruling in South African Football Association v Sandton Woodrush stated that “mala fide” registration of trademarks includes marks that are registered with no intention to use them as trademarks but only for the purpose of precluding another from using such a marks as a trademark.
But, as the requirements of section 34(1) state, the domain name will have to be used in a relation to identical or similar goods or services as that of the registered trademark owner. If no content linked to the domain name exists, the cybersquatters will not be using the mark in a way that constitutes trademark infringement according to the Trademarks Act, and is therefore not in violation of the act.
Ebersöhn shows another theoretical application of a cybersquatting scenario where, if a domain name is registered and is confusingly similar to a known trademark, and also has content linked to the domain name for instance containing hyper links or paid online advertising, such as in the jenniferlopez.com and Zuccarini cases for instance, the question that will arise is whether or not the existing registered trademark was registered to also maintain goods or services of an Internet based nature.
If the trademark proprietor, such as iPod had its trademark registered to cover Internet-based sales as well, or covering Internet-based advertising, then the domain name owner would be committing a trademark infringement for using the domain name as a confusingly similar mark as the proprietor’s registered trademark, if not, then it seems that once more the Trademarks Act will Fail to be of assistance to help the proprietor protect his trademark from the usage of cybersquatters..
I would submit that an application of section 34(1)(c) could be implemented, seeing as the domain name being used with Internet content, even though not relating to the goods or services of the registered trademark and irrespective of whether the trademark has an aspect of Internet based usage to it, is in fact creating an instance of dilution of the trademark as the domain name would technically be taking unfair advantage of, or be detrimental to the distinctive character or reputation of the registered trademark. By taking a confusingly similar trademark, mala fide, that is awarded to the exclusive use of its proprietor, and making some form of profit or use from it that causes the trademark to lose a sense of its distinctive or characteristic value. One could argue that the domain name registrant is committing trademark infringement.
In other words, if one were to apply the same principal as the US Courts in terms of trademark dilution, a much broader spectrum remedy is afforded to the proprietors of registered trademarks.
The same aspects can be applied interchangeably to the occurrence of typosquatting as the domain names may still be regarded as confusingly similar, the same principles as with “identical” domain name-trademark cybersquatting applies.
Local Method Of Resolution
The Electronic Communications and Transactions Act, 25 of 2002, set the stage for an independent Domain Name Authority in the South African “.za” domain name space. Section 59 of the ECTA established ZADNA, the .za Domain Name Authority, under section 21 of the Companies Act, 61 of 1973.
ZADNA is responsible for the management and administration of the .za domain name space, as well as the registries and registrars involved in maintaining and registering the domain names in the .za domain name space. Further, the authority is also given certain powers pertaining to dispute resolution in regards to domain name registrations.
According to s69(3) of the ECTA, the Minister may prescribe such regulations for the ZADNA to apply, such as procedures for dispute resolution pertaining to the registration of domain names, criminal and civil liability, as well as where these domain name registrations may possibly infringe on the ownership of proprietary trademarks.
ZADNA is also responsible for the overall administration of the dispute resolution and adjudication process. Regulations for this process have been issued and are available on the website //www.domaindisputes.co.za.
It is within ZADNA’s powers to accredit duly qualified domain name dispute resolution service providers. The South African Institute of Intellectual Property Law (SAIIPL) is one such institute, consisting of members from most of the major South African law firms who specialize in intellectual property. A few rulings have already been made by this accredited institute.
Of these rulings, 36 have been reported and can be accessed from the website mentioned supra. The outcomes on two cases are still pending. Pistorius notes that the high success rate of .za complainants mirrors the success rate of the WIPO panels. It can be construed from these findings that
The adjudication will heard on the following grounds, that the domain name registration is in some way abusive or offensive.
Abusive registrations entail that the domain name was registered or acquired in a manner that, at the time of registration, took unfair advantage of, or was in some way detrimental to the rights of the complainant with reference to a name or a mark which is similar or identical to the domain name, or the use of the domain name is unfair to, or in some way detrimental to the rights of the applicant who seeks relief in arbitration.
A further ground of complaint is that the registration of the domain name in the hands of the registrant is an offensive registration that advocates hatred that is based on race, ethnicity, gender or religion and/or constitutes incitement to cause harm. These elements are also present in the wording of section 16(2) of the Constitution.
This requirement must be proven on a balance of probability by the complainant. The procedure for lodging a complaint is also contained in the regulations. A procedure starts off by the lodging of a complaint with an approved dispute resolution service provider as accredited by ZADNA. Certain formalities are required, such as the complainant providing a physical address and method of communication.
The grounds upon which the complaint is based must also be set out in detail. From here the complaint is sent to the registrant, who has a period of twenty days from the date of commencement in which to lodge a counter/answer. The answer is sent back to the complainant who then has ﬁve days to reply.
An adjudicator is then appointed and the parties notified. The adjudicator then makes a decision based mostly on the evidence in documentation and argument, and sends his decision to the service provider within fourteen days of appointment.
In terms of Regulation 9, an adjudicator may:
- Refuse a dispute, or transfer of a domain name alleged to be abusive;
- Refuse a dispute, or the removal and prohibition of a domain name, alleged to be offensive, from future registration; and
- Refuse a dispute that constitutes reversed domain name hijacking.
Adjudicators are also bound by precedents of previous decisions as is indicated in regulation 13:
13. (1) An adjudicator must consider and be guided by previous decisions made in terms of these Regulations, hereinafter referred to as “national decisions”, and decisions by foreign dispute resolution providers, hereinafter referred to as “foreign decisions”.
(2) An adjudicator must be guided by national, foreign and international law.
(3) An adjudicator must provide in his or her decision the full reference to national and foreign decisions as well as national, foreign and international law that he or she considered.
As can further be seen from the wording of Regulation 13(2), decisions made by the adjudicators must also take into account international law, that said, it is clear that the South African dispute resolution process will take note of changes and trends in such international resolution decisions as made by WIPO, Nominet in the UK, The National Arbitration Forum in the USA, and the general guidelines as laid out by the Uniform Dispute Resolution Procedure (UDRP), an international procedure on which the South African DRP was founded.
Judgement is then sent to, and implemented by the registrar who registered the name to the registrant.
The process is also outlined very comprehensively on the dedicated domaindisputes.co.za website, as it guides a possible complainant through the steps necessary to file a response to start the proceedings.
The First Adjudicated Domain Name Cases
The development and adaptation of a domain name dispute resolution process in South Africa was a slow process, starting in the 1980’s, from the administration of the .za namespace under UNINET, to its current administration under ZADNA.
Pistorius comments that the lack of harmonization and integration between the Domain Name System and protective legislature for the benefit of intellectual property proprietors has caused the illegal ‘cyber’-practices such as registration of trademarks as domain names in bad faith to emerge and prosper.
South Africa’s Alternative Dispute Resolution Regulations were promulgated in terms of section 69 read with section 94 of the ECTA, in November 2006. The main requirement for a remedy to be presented to an applicant is that a domain name had to either be registered in bad faith or subsequently used in bad faith, or the registration of the domain name had to be in some way contra bones mores.
These regulations were put into effect during the adjudication of the Mr. Plastics case.
In the case of Mr. Plastic Mining & Promotional Goods CC v Mr. Plastic CC, number ZA2007-0001, the complainant contended that the domain www.mrplastic.co.za was registered mala fide, qualifying an abusive registration aimed and confusing the public into believing that the domain was operated by the registrant as a closely related or affiliated business of Mr. Plastic CC.
The complainant applied to have the adjudicator order transfer of the domain name to Mr. Plastic CC.
A point of consideration is the fact that the complainant did not have a registered trademark, he asserted his rights by stating that the registration and use of the disputed domain name www.mrplastic.co.za infringed his common-law right in the unregistered trademark Mr. Plastic. The adjudicator noted that if the complainant could prove an instance of passing-off, the registration could in fact still amount to an abusive registration. Upon hearing the complaints though, it was found that both parties were in fact legitimate owners in their respective rights over an unregistered trademark incorporation of Mr. Plastic.
The complainant had to prove on a balance of probabilities, that it had rights in respects of a trademark, mark or name which is identical or similar to the domain name in dispute, and as such was registered in a way that qualifies as an abusive registration. The application failed though, as the complainant failed to show that it had established rights in respect of the name, identical or similar to the domain name in dispute.
On the matter of abusive registration, the adjudicator found that the domain name in dispute:
- Was not registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s rights;
- Has not been used in a manner that takes unfair advantage of, or is unfairly detrimental to the Complainant’s rights
Pistorius points out that the distinctive quality of the Complainant’s mark, as the adjudicator noted, may not have been of such a degree that could qualify the registration of the domain name incorporating the mark as inherently abusive.
It seems that a greater burden of proof is necessitated where the mark is of a general compilation, such as the mere words “mister” and “plastic”. Where a mark is lacking in distinctiveness, Pistorius states that it can acquire distinctiveness through extensive use.
The adjudicator noted that where the mark is of a more descriptive value, it will be less adaptable for use by other traders, and more readily distinguishes the proprietor’s goods or services. Such marks, when registered as domain names could be more easily be transferred to a complainant when alleging abusive registration.
The adjudicator in the case of Fédération Internationale de Football Association (FIFA) v X Yin commented on the unclear regulation 4(1)(b) of the arbitration regulations, stating that a registration cannot be ‘registered in a way’ that would lead people to believe the domain is registered, operated, authorized or affiliated with the proprietor of a related trademark.
Instead he suggests that the regulation should be applied in such a way as to mark the potential of a registration to be abusive and cause confusion. As the potential emerges as the domain registration is carried out and it becomes evident whether the registrant had knowledge of the existence of the proprietor’s trademark, and the probably harm the domain registration may have on the proprietor’s exclusive right to the use of his mark.
In the case of Homefront Trading 272 CC v. Ward, the complainant was the registrant of the domain name private-sale.co.za and the disputed domain name was privatesale.co.za, which is closely related to the complainant’s registration, to the point where it might be considered typosquatting. The dispute was not successful as the adjudicator found that the complainant did not establish a right in hyphenation combined words “private” and “sale”. The descriptive value could not be said to have afforded the complainant a distinctive mark.
Pistorius notes that in the private-sale case the complainant’s ownership of the domain name private-sale.co.za formed a part of his commercial rights, these rights include the right to trade freely without unlawful interference or competition from anyone, yet the adjudicator commented that the registrant, in seeking to divert customers from the complainant’s domain to his own, was acting neither contra bonos mores in the sense of passing off a trademark, nor unfairly, dishonest or contra bonos mores in any way.
Monopoly over simple descriptive terms such as the words ‘private-sale’, even when utilized as a domain name and where no secondary descriptive meaning has developed through use, would be unfair to the reasonable requirements and rights of traders and others to use such related names as well.
Another issue that had been adjudicated is the time at which the registrant and complainant’s rights in the domain name and trademark established respectively.
This issue had been dealt with in the Mxit case where it was held by the adjudicator, in considering both Nominet and Uniform Dispute Resolution policies, that where the registrant’s rights had established prior to the complainant’s rights in a related mark, it could only have relevance to questions concerning the registrant’s legitimate interest in the domain name and its distinguishing value, as well as the possibility of bad faith registration of the domain name.
Pistorius notes that in the WIPO Arbitration and Mediation Center’s Overview of WIPO Panel Views, it is held that where a domain name was registered before a trademark right had been established, registration of the domain name could not have been in bad faith as the registrant could not have foreseen the complainant’s rights. Yet there are circumstances where the fact that the registrant’s right in the domain name established before the complainant’s right in the mark will not yield such an automatic assumption negating bad faith.
An example of such circumstance could be where the respondent had intimate knowledge of, or was aware of the complainant’s tentative rights, and by registering the domain name his or her aim was to take advantage of this knowledge to capitalize on the probable confusion that the domain name and any potential rights may share. In such cases, regardless of the time difference in the establishment of rights, bad faith may still be found.
Previous Remedy Under Trademark Law
If one were to refer a domain name dispute to a court, and argue in terms of the protection afforded under the Trademarks Act, 194 of 1993, then section 34(3) also holds certain remedies for the protection of trademark infringement. This was the only available remedy for applicants prior to the promulgation of the ADR Regulations. Section 34 states:
“34(3) where a trademark registered in terms of this Act has been infringed, any High Court having jurisdiction may grant the proprietor the following relief, namely –
(a) An interdict;
(b) an order for removal of the infringing mark from all material and, where the infringing mark is inseparable or incapable of being removed from the material, an order that all such material be delivered up to the proprietor;
(c) Damages, including those arising from acts performed after advertisement of the acceptance of an application for registration which, if performed after registration, would amount to infringement of the rights acquired by registration;
(d) in lieu of damages, at the option of the proprietor, a reasonable royalty which would have been payable by a licensee for the use of the trademark concerned, including any use which took place after advertisement of the acceptance of an application for registration and which, if taking place after registration, would amount to infringement of the rights acquired by registration.”
Uk And European Legislation
The United Kingdom Trademarks Act 26 of 1994 closely corresponds to South African law, seeing as aspects of SA law is based loosely on the English common law. The English law has a concept similar to the terminology of South African law in relation to marks confusingly similar to existing registered or well known trademarks, to the point where the mark, or in this case, domain name would make the Internet visitor believe that it was related to, endorsed by or in fact identical to the original proprietor’s goods or services, this is termed passing-off.
In the case of British Telecommunications plc v One In A Million Ltd. The owners of various well known trademarks, including the major British retailer, Marks & Spencer, were targeted by cybersquatters who registered quite a number of variations and trademarks owned by the proprietors and respondents, including such domain names as mark-sandspencer.com. The registrants aimed to sell these domain names to the proprietary trademark owners. The court decided that if the aim of this registration and use was to make use of the popularity of a well known mark, and to have these variations act as passing-off marks for the original trademarks, then the court should consider an interdict as a means of remedy.
The court found that a cybersquatters or alternatively, one who makes a trade from selling domain names, has four purposes for such a registered name:
- Selling it to the original Proprietary owners or bullying them into buying the relatively similar mark, so as to avoid having customers be fooled into visiting the passing-off mark.
- Selling it to an interested third party who may wish to sell it to the proprietary trademark owners.
- Selling it to a buyer who has a specific and distinct interest in the domain name.
- It may be retained for the purpose of preventing the proprietary owners from using or utilizing the domain name.
The court ruled that registering the domain names in these instances was unlawful. Use of, or the threat to use, or enable a third party to use the proprietor’s goodwill contained in and connected to the trademark amounts to false representation, which constitutes passing-off. Even the registration without usage will inevitably create the illusion to those consulting the registry (whois database) that the domain name owners is in some way related to the trademark owner.
The court decided that the registration of these domain names were an instrument of fraud. The court found that the cybersquatters actions constituted a threatening tort, intended to infringe the trademark owner’s rights at a future time.
Uk And European Methods Of Resolution
It is obvious that the United Kingdom has a method to an extent similar to that of South Africa in relation to Dispute Resolution, when one takes a look at how the UK deals with cybersquatting.
It seems the general court ruling on registering domain names for the purpose of cybersquatting or typo squatting in the UK is that the rules relating to the protection of trademarks are applied, such as held in the UK Trademarks Act, 1994.
A domain name registered mala fide is seen as a form of trademark infringement, and as such, passing-off, a form of fraud.
If one’s trademark is in danger an application to a court with suitable jurisdiction is made, and from there the case is handled under the necessary burden of proof to prove that the applicant is indeed the owner of the trademark as a well known mark, that the mark is indeed well known, that the owner was the first to utilize it in a way that distinguishes his goods or services and that it has been used as such for an extended period of time.
Once this is proven, one needs to show that the registered domain names are in fact infringing on the trademark, and causing confusion among the users as to be passing-off as related to the original mark.
From there the courts may find whether or not to grant relief by way of an interdict, or possible the session of the registration to the original propriety owners of the trademark.
Pro’s And Con’s Of Differing Legislation
The drawback to an un-unified registration process for domain names, that does not take into account unified aspects of trademark law and alternative dispute resolution processes associated with such registrations and uses could be summarised as follows:
The domain name registration system does not recognize the term “confusingly similar” in relation to existing trademarks, as recognised by the various trademark laws. The system does not cross reference any tendered domain name to registered trademarks in the different international jurisdictions, nor does it take notice of the registrant’s legitimate interest in the domain name when registering the tendered domain. Even a domain name which varies only slightly from an existing domain name may still be registered. This gives rise to such instances of infringement as is seen in typosquatting cases. The only requirement is that a domain name must be unique, literally speaking.
Most trademark systems take into account the similarity of a new mark to existing trademarks, qualifying the new mark’s established right by way of certain trademark criteria, in deciding whether registration should be granted, and whether a trademark is valid. The registration of a domain name is not subject to criteria specifying and differentiating the usage of the website for specific goods and services. This is why, when confusingly similar trademarks cover different goods or services, they are allowed to co-exist.
An important characteristic of domain name system is that it does not operate on, nor is it bordered by state boundaries. General top level domains can mostly be registered and accessed by registrants from any state. Companies which have coexisted for years in different states using the same trademark names, albeit in separate jurisdictions, may find themselves competing for the right to be the first to register the specific name in a gTLD, as per the first-come-first-served principal of registration. This results in losses for the companies who are then excluded from the privilege of having access to and use of a domain name directly related to their trademark.
In some states, the process by which to gain access to a remedy in case of infringement, would be easy to come by and will serve the complainant well, while the stringent rules, checks and balances of another state’s regulation and legislation might exclude a bona fide complainant from having a remedy that he would have been granted in another state or had the dispute been handled by one of the international institutes for alternative dispute resolution. The practice in civil cases of having to following the registrant to his forum to institute a claim, will also possibly have a negative effect on the rights of some complainants, where the case follows an international dispute and different states will have different rules relating to whose jurisdiction will govern the action or application.
The benefits to having each state administer its own jurisdiction and trademark law, as well as differing standards of alternative dispute resolution, could be summarised as follows:
Each state has their own way of regulating domain name registrations, guidelines native to their own legislation, trade, trademark and intellectual property laws, structures and provisions set in place to easily handle such instances as domain name disputes in a way that best suits the state’s abilities, funds and infrastructure of the specific state.
These countries are free to create authorities and structures that lay down the rules for trademark protection and also domain name registration and its place in the economy.
This results in better regulation the development of the necessary infrastructures needed to expand and develop these needed authorities, regulatory or enforcing in nature, without the strains of having to keep up with other, more “equipped” states who may set the pace, leading to such instances as third world countries and developing nations falling behind in developing the standards that they are not able to implement due to whatever constraints hampering them.
Where a state uses and develops its own structure for such instances as an alternative dispute resolution forum, it is common for these states to take into account international practices and legislations, and then to customise these practices to their own needs, traditions and laws, so as to best implement them.
Though this multi-faceted aspect of internationally independent processes does lead to emerging cyber law based violations on the intellectual property and business laws of different states, in the end, each state will be best equipped to deal with these breaches and violations in a way that is native to their adjudication and court systems.
Where the need arises to have a neutral forum in instances of international disputes, international institutions such as WIPO and ICANN will still be able to assist the parties by way of the Uniform Dispute Resolution Process.
As most states, including South Africa based their ADR processes and accommodating legislation on this international Uniform Process, the leap is not that great nor is the process that unfamiliar to either party as to give rise to an unfair advantage or handicap.
Each state is entitled to create their own legislation and empowered with differing jurisdictions, with which they can then implement such legislation and regulation to make the application as fluid and accommodating to the circumstances and means of the state’s citizens, as possible. Where a more uniform process is necessitated, no state or applicant would be barred from its use, given that certain requirements are indeed met.
As was discussed, regulating bodies such as WIPO and the ICANN have laid down specific standards of registration requirements, dispute resolution processes and adjudication remedies.
These international organisations help play a part in the development of the international model law with reference to the problems faced by its member states due the emergence of cybersquatting and typosquatting so that a fair and uniform set of rules may be applied to all state legislation, and that the burden of proof for parties involved can become uniform.
By having each member state develop its own individual processes and legislation, greater input is received on an international scale relating to what is effective and what is not. This is then relayed to the development of international model law, which in turn reflects once more on the development of each individual state’s legislation and processes.
In other words, a positive feedback loop is created, which helps better not only the international model law, but also the model each country follows as it considers international law in its own individual applications.
It can therefore be surmised that having differing legislation and an international uniform model of legislation co-exist, creates a most effective ripple effect that in turn induces positive development for all states involved, as well as the international standard that guides this development.
Evaluating South Africa’s Position
South Africa has made much progress, and will do well to keep the consideration of International Standards and Model Law, as set by ICANN, WIPO and its international neighbours a mandatory directive.
The Constitution of the Republic of South Africa, section 39 states:
39. Interpretation Of Bill Of Rights
- When interpreting the Bill of Rights, a court, tribunal or forum
- must promote the values that underlie an open and democratic society based on human dignity, equality and freedom;
- must consider international law; and
- may consider foreign law.
- When interpreting any legislation, and when developing the common law or customary law, every court, tribunal or forum must promote the spirit, purport and objects of the Bill of Rights.
The Bill of Rights does not deny the existence of any other rights or freedoms that are recognised or conferred by common law, customary law or legislation, to the extent that they are consistent with the Bill.
As Regulation 13 of the Alterative Dispute Resolution Process regulations for domain name disputes directs the adjudicator to take into account all international as well as foreign legislation and decisions when adjudicating a dispute, so does the regulation echo the directive contained in section 39 of the Constitution of South Africa that when interpreting the Bill of rights, a court must consider international law, and may also consider foreign law when interpreting any rights.
It is also trite law that courts, and by extension, adjudication forums in ADR processes have an obligation to interpret and expand our common law to promote the spirit, purport and objects of the Bill of Rights.
As Pistorius remarks, the first .za ADR cases have demonstrated that SAIIPL as only one of two currently accredited service providers, does have the ability to successfully implement and manage an ADR system for the benefit of both trademark proprietors and domain name registrants.
In the adjudication of these precedent setting cases, proper consideration was given to foreign decisions and policies, from which the expansion of South African legislation and benefited.
The ADR processes as developed in South African adjudication forums, has been based on and largely adopted from the international UDRP Policy and Rules. The adaptation of WIPO panels and existing ADR infrastructure has also greatly benefited the prompt development of the South African position in relation to the implementation of an ADR policy in the rapidly expanding sector of legal development that is the Lex Informatica.
However, Pistorius points out that the adoption of the UDRP as the base starting point for ZADNA administration and ADR development was only a short term aid, and that through the advantageous development of an indigenous ADR system many of the problematic pitfalls contained in the UDRP Policy was avoided.
Though South Africa may have been behind in the development race to adapting legislature that may better accommodate the ever growing information technology expansion and its effect on traditional legislation, drafting and development of our local ADR Regulations had the benefit of hindsight, improving and building on the experiences of other states, such as Nominet or the National Arbitration Forum in the USA.
Furthermore, South African legislation and regulations are also adapted and equipped to manage complaints formed with integrated intellectual and commercial rights aspects.
Pistorius also notes that South Africa also has the advantage of being able to manage complaints based on offensive registrations, broadening the effective application and remedy towards the complainant, providing a fast, malleable and cost effective forum for the resolution of domain name disputes, effectively creating a broad remedy against the effects of cybersquatting and typosquatting and its negative effect on, among other rights, the complainant’s rights in terms of trademark property.
The South African ADR processes has also benefited from the interim period of development before the .za ADR regulations were promulgated, as this period of legislative adaptation effectively expanded the South African common law, adapting existing remedies contained within the Trademark Act to apply in domain name disputes as well, recognizing that domain name registrations also have aspects of trademarks and that individual legitimate interest may be established in the registration and operation of domain names within the ambit of trademark law.
Snail & van der Merwe also comment on the advances South Africa has made and note that South African legislature has advanced beyond its African counterparts, ensuring that .za domain name ADR is time and cost effective. Adaptation of the differentiation between “abusive” and “offensive” registrations, and the comprehensive adjudication precedents implemented by the SAIIPL may contribute to the effective elimination of domain name “cyber piracy” as a whole in the .co.za domain.
South Africa is definitely on the right track, and its implementations are up to standard, if not more comprehensive than the international norms and procedures as implemented by its international neighbours and institutes. From the few cases handled thus far, it is clear that our methods in implementing legislation and regulation are effective and that the ADR forum is well established and successful.
One might venture to say that at this comprehensive development pace, South Africa’s legislative model concerning such phenomenon as cybersquatting and typosquatting, as well as other derivative and correlating ‘cyber crimes’ may set a trend for other states to follow.
Cybersquatting dispute resolution
May 2005, Page 34
The British Computer Society
.za Alternative Dispute Resolution Regulations: The First Few SAIIPL Decisions
Journal of Information, Law & Technology (JILT)
2008 Volume 2, Pages 727-740
Available at <//go.warwick.ac.uk/jilt/2008_2/pistorius1>
May a domain name constitute a trademark? (Part 1)
Juta’s Business Law
Volume 12:11, Pages: 39-42
Sabinet Online, 2004.
May a domain name constitute a trademark? (Part 2)
Juta’s Business Law
Volume 12:22, Pages 61-65
Sabinet Online, 2004.
Cybersquatting, typosquatting and trademark law (part 1)
Journal of South African Law
Volume 2, Pages 315-329
Sabinet Online, 2006
Cybersquatting, typosquatting and trademark law (part 2)
Journal of South African Law
Volume 3, Pages 551-563
Sabinet Online, 2006
Cybersquatting, typosquatting and trademark law (part 3)
Journal of South African Law
Volume 4, Pages 766-782
Sabinet Online, 2006
Domain Name Registrars: Are they part of the domain name fraud problem?
InfoSec CD Conference’06, September 22-23, 2006, Kennesaw, GA
Proceedings of the 3rd annual conference on InfoSec Curriculum Development
Pages: 113 – 117
Year of Publication: 2006
Domain Names and Dispute Resolution
World Patent Information
Volume 23, 2001
Administrative-law Aspects of Domain Name Dispute Adjudication
The South African Law Journal
Volume 125, Number 2, 2008
A Brief Excursus on the South African Online Alternative Dispute Resolution
Andre van der Merwe & Sizwe Snail
Journal of Information Law & Technology (JILT)
Conference paper published on 18 January 2009
Volume 2, 2008,
Telkom SA Ltd & TDS Directory Operations (Pty) Ltd v The Internet Corporation
SAIIPL Decision ZA2007-0005
.ZA Alternate Dispute Resolution Regulations
Nissan v Nissan [trademark dispute]
Volume 39, Issue 10, October 2002, Pages: 53-54
Verizon California Inc. v Navigation Catalyst Systems Inc. 568 F.Supp.2d 1088
United States District Court, C.D. California, 2008
Tyler Green v Greg Fornario; Tyler Green Sports 486 F.3d 100
United States Court of Appeals, 3rd Circuit
Land’s End Inc. v Eric Remy, Thinkspin Inc, Braderax Inc, & Michael Seale 447 F.Supp.2d 941
United States District Court, W.D. Wisconsin, 2006
Shields V. Zuccarini: The Role of the Anti-cybersquatting Consumer Protection Act in Fighting Typosquatting
33 U. Tol. L. Rev. 683
Adjudicated ADR cases by the SAIIPL
Available at //www.domaindisputes.co.za/content.php?tag=6
Accessed on 10 October 2009.
Electronic Communications and Transactions Act 25 of 2002
Anti-cybersquatting Consumer Protection Act
United States of America
Intellectual Property Laws Rationalisation Act 107 of 1996
UNIFORUM SA – Terms and conditions for Domains Delegated in the CO.ZA Domain Name Space
Trademarks Act 194 of 1993
Information and Communications Technology Law
Ed. Prof DP van der Merwe et al.
ISBN: 978 0 409 02028 1
The Management of Internet Names and Addresses: Intellectual Property Issues
Final Report of the WIPO Internet Domain Name Process, April 30, 1999
Available at //www.wipo.int/amc/en/processes/process1/report/finalreport.html accessed on 8 October 2009.
Suggested Further Reading
What’s in a name? [Internet Domain Name System]
Volume 49, Issue 11, November 2003 Pages: 38-40
Domain name solution causes new problems
Volume 32, Issue 10, October 1999, Pages: 11-15
Managing intellectual property: Nail it down before you lose it
Computing & Control Engineering Journal
Volume 13, Issue 6, December 2002, Pages: 266-267
Internet Domain Names and the Interaction with Intellectual Property
Computer Law & Security Report
Volume 24, 2008
An Evaluation Of Selected Aspects Of The Alternative Dispute Resolution Regulations For The Resolution Of Domain Name Disputes In The .Za Domain Name Space
South African Merchant Law Journal
Volume 19, 2007