Overview of Domain Name Disputes in South Africa
Since the introduction of the information era, through the internet, many South African companies have been affected by domain name hi-jacking, cyber-squatting or simply the unauthorised registration of trade marks as domain names.
In the past, disputes of this nature had to be settled through expensive and time consuming court proceedings. Now they are settled through an Alternative Dispute Resolution (ADR) process in terms of regulations governed by the Electronic Communications and Transactions Act of 2002. The ADR process is administered by the South African Institute of Intellectual Property Law (SAIIPL).
The purpose of this blog post is to explore the procedure and criteria involved to lodge a complaint with SAIIPL.
CRITERIA FOR LODGING A COMPLAINT:
The ADR procedure is preferred over litigation proceedings in the courts of South Africa not only because it does not have the problems often encountered in vesting jurisdiction but also because it is quick and relatively inexpensive.
The Regulations allow for complaints to be lodged against domain names which:
take unfair advantage of the rights of a trade mark owner;
are contrary to the law;
give offence to any class of persons;
amount to hate-speech, racism; or
could be considered to be contrary to public policy.
In the case of trade mark rights, the complainant needs to show that:
it has rights in respect of a name or mark which is identical or similar to the domain name; and/or
that the domain name, in the hands of the registrant, is an abusive registration.
An abusive registration is considered to be a domain name that was used or registered in a manner which took unfair advantage of and/or was unfairly detrimental to the complainant’s rights. These rights include, but are not limited to, intellectual property rights such as common law or statutory rights in a trade mark, commercial, linguistic, religious and personal rights protected under South African law.
Domain name disputes are lodged directly with SAIIPL as a Dispute Resolution Provider. The Registrant will have an opportunity to respond to such a complaint and, once all the arguments have been submitted, an Adjudicator will be appointed to make a determination. It takes approximately 2 months to obtain a decision and the Adjudicator’s decision will be implemented through the Registry system directly. Therefore, the assistance of the domain name Registrant is no longer required to ensure the successful transfer of a domain name. (This has combatted previous constraints where the Registrant provided false or incomplete details under the WHOIS database).
The ADR principles outlined in the Regulations and implemented through the domain name dispute process are based on equity and common sense. Having said this, the basic legal principles of evidence should not be neglected. All in all, the ADR process is a welcome addition to our body of law and has provided an efficacious and cost effective means to resolve domain name disputes.