Mr Sizwe Lindelo SNAIL

“Resolving domain name disputes in South Africa”

Principal Attorney, SNAIL ATTORNEYS @ LAW

LEX INFORMATICA – 2012 CONFERENCE

FNB CONFERENCE CENTRE, Johannesburg

“Legal  advice @ your service “

• Overview: The road leading to the first domain name decision

• The Website

• The ADR Process

- Grounds for Filing an ADR complaint

- Factors indicating Abusive or Offensive registration

- Factors indicating that registration is not Abusive nor Offensive

- Filling a dispute

- Filling a response

- Filling a reply

- Decisions of the Arbitrator/Adjudicator

- Implementation of Decision

- Appeal

Introduction and Overview :Introduction and Overview :

– ECT Act (August 2002)• Chapter 10, Part 6 • DOC in consultation with DTI must establish an ADR process for the .ZA

namespace• Develop Regulations with due regard to international precedent

– Regulations (November 2006)• Concepts of an Abusive and Offensive Registration• Stipulate basic Procedure for administration of Disputes • Accreditation of ADR Providers

– Accreditation of the SAIIPL (February 2007)• Conclusion of a Service Level Agreement with ZADNA• 2 (two) year term

– Establishment of DomainDisputes.co.za (March 2007)

– First Case Decision (June 2007)

Overview: The road leading to the Overview: The road leading to the first domain name decisionfirst domain name decision

General Objectives:

• Provide an Administrative Framework for the administration of domain name disputes

• Provide useful resources, information and assistance for interested Parties.

•Assistance with lodging dispute

•Provide a logical precedent base

• Promote awareness of domain name related matters by publishing important news and local domain name decisions

• Promote an image of neutrality.

(SAIIPL:2008)

THE DOMAINDISPUTES.CO.ZA - WEBSITETHE DOMAINDISPUTES.CO.ZA - WEBSITE

The ADR ProcessThe ADR Process

• Grounds for Filling an ADR complaint

The ADR Regulation makes provision for a domain name complaint to be instituted against domain names and their registrant that , take unfair advantage of the rights of a trade mark owner, are contrary to law, give offence to any class of persons, amount to hate-speech , racism or could be considered to be contrary to public policy.

• ABUSIVE REGISTRATIONABUSIVE REGISTRATION

Complainant has rights in name / mark that is identical or similar to that of registered domain name of registrant and / or

• OFFENSIVE REGISTRATIONOFFENSIVE REGISTRATION

Registrant has registered a domain dame that that is offensive

ABUSIVE REGISTRATIONABUSIVE REGISTRATION • Circumstances indicating that registrant registered domain name with sole aim of depriving , selling to ( over out-of pocket expenses ) or to rent to the rightful holder of rights or to the competitors of the holder in the said rights, intentional business disruption and blocking of rightful holder of right from registering domain name.

• Unlawful passing-off of trademarks / Typo squatting ( registered and unregistered )

• Evidence is presented together with other evidence that registrant has engaged in a pattern of abusive registrations

• Provision of false and / or incomplete information on the WHOIS database

OFFENSIVE REGISTRATIONOFFENSIVE REGISTRATION

• Registrant has registered a domain dame that advocates, racism, hate speech, gender inequality, attack on religious beliefs, incitement to cause harm or other contra bonus mores grounds

Factors indicating Abusive or Offensive Factors indicating Abusive or Offensive registrationregistration::

ABUSIVE REGISTRATIONABUSIVE REGISTRATION • Before being aware of complaints cause for complaint registrant has:

(a) Used or made demonstrable preparation to use domain name in connection with a good faith offering of goods and / or services

(b) Been commonly known by the name or connected with mark which is identical or similar to that of the domain name

(c) legitimate non-commercial or fair use of the domain name

• Domain name is used generically or descriptive words have used in fairly

• Registrant has demonstrated fair use (incl. fair comment and fair criticism )

•OFFENSIVE REGISTRATIONOFFENSIVE REGISTRATION

• Fair comment and / or fair criticism

Factors indicating that registration is Factors indicating that registration is not Abusive nor Offensive not Abusive nor Offensive

FILLING A DISPUTENB:NB:

1. COMPLAINANTMUST ENSURETHAT THE COMPLAINTCOMPLIES WITHTHE ADR REG.

2. IN CASE OF NON-COMPLIANCE AFTER NOTIFICATION BY ADMINISTRATOR, COMPLAINANT MUST ENSURE COMPLIANCEWITHIN 5 DAYS OFNOTIFICATION OR DISPUTE DEEMED WITHDRAWN

3. IN CASE OF NON-PAYMENTOF FIXEDFEE, COMPLAINANT MUST ENSURE PAY-MENT WITHIN 10 DAYS OF THE DISPUTE BEING FILLED OR DISPUTE DEEMED WITHDRAWN

FILLING A RESPONSE

NB:NB:

A REGISTRANT MUST FILE HIS

RESPONSE WITHIN 20 DAYSOF RECEIPT OFCOMPLAINANTS

COMPLAINT

FILLING A REPLY

• WITHIN 5 (FIVE) DAYS OF RECEIPT OF REGISTRANT’S RESPONSEWITHIN 5 (FIVE) DAYS OF RECEIPT OF REGISTRANT’S RESPONSE

• NO PARTICULAR FORMAT BUT IT MUST ALSO COMPLY WITH ADR NO PARTICULAR FORMAT BUT IT MUST ALSO COMPLY WITH ADR PROVIDER’S SUPPLEMENTARY PROCEDURE PROVIDER’S SUPPLEMENTARY PROCEDURE

• AFTER 5 (FIVE) DAYS THE ADMINISTRATOR WILL APPOINT AN AFTER 5 (FIVE) DAYS THE ADMINISTRATOR WILL APPOINT AN ADJUDICATOR ADJUDICATOR

• ARBITRATOR MUST MAKE HIS / HER DECISION WITHIN 14 DAYS OF ARBITRATOR MUST MAKE HIS / HER DECISION WITHIN 14 DAYS OF HIS OR HER APPOINTMENT ( EXTENSIONS MAY BE GRANTED ON HIS OR HER APPOINTMENT ( EXTENSIONS MAY BE GRANTED ON GOOD CAUSE )GOOD CAUSE )

Complainant1

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Registrant

Adjudicator

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(SAIIPL: 2008)

FLOW CHART FOR .co.za DOMAIN NAME DISPUTES

COMPLAINT - lodged in paper format, in triplicate

and electronic format - comply with formalities in Reg

16(2), Supp Rule 9(a)

NO - notify complainant - 5 days to correct or deemed withdrawn - if fee not paid within 10 days of receipt

of dispute by provider, deemed withdrawn

PROVIDER - check compliance

YES - notify registrant of compliance - notify complainant, registrant,

second level domain administrator and Authority of date of commencement of dispute

RESPONSE - within 20 days of commencement of dispute - lodged in paper format, in triplicate and

electronic format - comply with formalities in Reg 18(2), Supp

Rule 9(a)

DEFAULT - appoint adjudicator to

proceed to decision

REPLY - within 5 days of receiving response from

provider - in paper and electronic format

DECISION - to be forwarded to provider within 14 days of appointment

DEFAULT - appoint adjudicator to

proceed to decision

COMMUNICATION OF DECISION - within 3 days of receiving decision from adjudicator, to parties and Authority - after 5 days of notifying parties and Authority, to second level domain administrator

APPOINT ADJUDICATOR - upon expiry of 5 days, but no later than 2 days thereafter

(SAIIPL: 2008)

DECISIONS OF THE ARBITRATOR

An Arbitrator may make the following decisions :An Arbitrator may make the following decisions :

• REFUSE DISPUTE ( e.g. No merits in claim, reverse domain name high jacking etc.)

• TRANSFER DOMAIN NAME ( e.g. Cyber squatting, Passing off ,Typo Squatting etc.)

• MAKE SETTLEMENT A BINDING DECISION ON PARTIES

IMPLEMENTATION OF DECISIONIMPLEMENTATION OF DECISION

• Second level domain administrator to wait 5 days after receiving decision from provider• Implementation within 2 days after 5 day waiting period

APPEALAPPEAL

• Statement of Intention to Appeal within 4 days of notification• Appeal Notice within 15 days after Statement of Intent• comply with formalities in Reg 32 (2)(3)(6), Supp Rule 10• provider to forward Statement of Intent and Appeal Notice within 3 days of receipt• Appeal Notice Response within 10 days from receipt of Appeal Notice• panel appointment• decision to be forwarded to provider within 20 days of appointment of last adjudicator• notification and implementation (see above)

• NB : Either party to proceedings may refer a dispute to the High Court for determination , appeal and or review.

Interesting Decided Cases:

www.Mrplastic.co.za

Facts:

The Complainant is Mr Plastic CC. The Registrant is Mr. Plastic & Mining Promotional Goods. The Complainant allowed the Registrant and several others to use the trade mark MR PLASTIC & Device and the trading style "Mr Plastic". The trade mark is not registered. The Registrant uses the domain name mrplastic.co.za. The Complainant has used its name and trade mark MR PLASTIC for 27 years and has a substantial reputation. The Registrant has used the trade mark and trading style MR PLASTIC for 18 years.

Decision:

A company or domain name registration does not necessarily give a Complainant rights in a name. If there is a reasonable likelihood that members of the public may be confused to believe that the business of the one is or is connected with the business of the other, it amounts to passing off. Complainant did not make out a case of passing off.

Interesting Decided Cases: www.phonebook.co.za

Facts:

Telkom SA Limited and TDS Directory Operations (PTY) Limited are the First and Second Complainants. The Internet Corporation is the Registrant. First Complainant is the registered trade mark holder of PHONE BOOK. Second Complainant publishes a phone directory entitled “The Phone Book”. The domain name <phonebook.co.za> does not currently link to a web site but the domain name <whitepages.co.za> links to an active web site www.whitepages.co.za. Complainant's registered trade marks are specifically endorsed to say that the Complainant does not have exclusive rights to the words “PHONE” and “BOOK”.

Decision:

Procedural objection: Registrant challenged the decision that the Regulations reply retrospectively, but the Adjudicator finds that Registrant is contractually bound to the proceedings and the Regulations apply retrospectively.

Rights in the mark: First Complainant has registered rights in respect of the trade mark THE PHONE BOOK logo. The Adjudicator rejects the Registrant's argument that the preposition, that appears in the Complainant’s mark, is not part of the domain name. Adjudicator also rejects the argument that its domain name is not abusive, because the exact trade mark of the First Complainant, namely thephonebook.co.za has been registered by a third party.

The Adjudicator finds that the Registrant has rights and a legitimate interest in the disputed domain names because he was the first to register them and he provided ample evidence of the generic nature of the two marks.

Interesting Decided Cases: www.Fifa.co.zaFacts:

Complainant is Fédération Internationale de Football Association (FIFA). FIFA is the worldwide governing body of soccer and organises and manages the international soccer tournament, officially called “FIFA World Cup” – watched by billions of viewers. FIFA is the registered holder of numerous registered trade marks consisting of or incorporating the word FIFA in South Africa and also internationally.

Decision:

FIFA is identical to the mark in which the Complainant has registered and common-law rights. The burden of proof shifts to the Registrant to show that the domain name is not an abusive registration.

The Adjudicator accepts the expert's finding in In chivasbrothers.co.uk: “Where a Respondent registered a domain name1) which is identical to a name in respect of that which the complainant has rights;2) where that name is exclusively referable to the complainant;3) where there is no obvious justification for the Respondent having adopted that name for the domain name;4) where the Respondent has come forward with no explanation for having selected the domain name,it will ordinarily be reasonable for an expert to infer first that the Respondent registered the domain name for a purpose and secondly that that purpose was abusive."

Interesting Decided Cases: www. oxycell.co.za

Facts:

The Registrant is Oxygen For Life (Pty) Ltd. The Complainants are Holistic Remedies (Pty) Ltd and Amka Pharmaceuticals (Pty )Ltd. First Complainant has filed a trade mark application for “oxycell”. Second Complainant is a licencee and permitted user of the trade mark. An associated company of Amka, registered the domain name oxycell.co.za in March 2007 and the name appears on the oxycell product packaging.

Decision:

It is common cause that the domain name oxycell.co.za is identical to the trade mark and the mark OXYCELL that Complainant uses. The Complainants submitted evidence that by the date the Registrant registered the domain name, the product and OXYCELL mark had already been well established in South Africa as a result of the sales, supported by substantial nationwide promotion and the product being available in over 600 outlets. The burden of proof is not to show that a Complainant would be successful in a passing-off case. The Adjudicator finds that the Complainant has, on a balance of probabilities, proved rights to the name OXYCELL, which is identical to the domain nameoxycell.co.za.

The Adjudicator finds that the domain name registration in the hands of the Registrant was registered in a manner in which, at the time when the registration took place, took unfair advantage of, or was unfairly detrimental to the First Complainant’s rights and has been used subsequently in a manner which takes unfair advantage of, or is unfairly detrimental to the Complainant’s rights.

Interesting Decided Cases: www. absapremiership.co.za

Facts:

Complainant is ABSA Bank Limited. The Complainant is the registered holder of many trade marks incorporating the ABSA mark. Complainant filed applications for the registration of the trade mark ABSA PREMIERSHIP in various logo forms. The Complainant is the largest commercial bank in South Africa and has branches or automated teller machines in virtually every town in the country. ABSA is a famous mark and the principal sponsor of the South African Soccer.

Decision:

The Complainant has acquired strong statutory and common law rights in the trade mark ABSA, and has also acquired strong common law rights in the trade mark ABSA PREMIERSHIP. The domain name <absapremiership.co.za> incorporates the Complainant’s ABSA trade mark and is identical to the Complainant’s ABSA PREMIERSHIP common law trade mark. The Complaint has rights in the mark ABSA and the mark ABSAPREMIERSHIP. The Adjudicator finds that the registration was abusive.

Registrant admits that it was fully aware of the Complainant’s rights and interests in the name.Registrant could not do anything by way of legitimate trade under the name ABSA PREMIERSHIP. An attempt to conduct legitimate business would be deceptive. Registrant does not use the web site. All of this indicates an abusive registration.

Interesting Decided Cases: www.vcbet.co.za

Facts:

First Complainant is the registered holder of many trade marks for the marks VICTOR CHANDLER and VICTOR CHANDLER INTERNATIONAL (with and without logo)in different countries, but not in SA. Complainants allege that they have protected the word and/or logo "VC" by way of community trade marks. Complainants use the "VC" mark in a specific way incorporating a logo.

Complainants operate their online business through vcbet.com

Decision:

Rights in the name: The Complainants base their rights on the existence and use of its domain name www.vcbet.com and its online gaming activities in over 70 countries with an annual turnover in excess of GBP 1 000 million.The Complainants have established the required reputation and goodwill for the purposes of passing-off in the trade marks VC and VC BET. They have established their intellectual property rights in the marks VC BET and VC, which is similar to the domain name.The Adjudicator finds that the domain name www.vcbet.co.za is indeed confusingly similar to the trade mark VC, incorporating as it does the whole of the distinctive mark VC in conjunction with the generic and non-distinctive term “BET”.

Abusive Registration: The Adjudicator finds that the registration and use of the domain name www.vcbet.co.za for betting services, amounts to passing-off. Registrant does not explain why he chose the domain name or why the domain name links to the www.play89.com web site.

Interesting Decided Cases: www.citroen.co.za

Facts:

Complainant is Automobiles Citroen, the French car manufacturer. The CITROEN trade mark is well known in relation to motor cars. CITROËN is registered as a trade mark in South Africa.

The Registrant has been an enthusiast of Citroën cars since he was a young boy and still is. The Registrant operates the web site solely in tribute to Citroën cars. The Registrant has madeno money from the web site. The Registrant admits that the Complainant has rights in respect of the trade mark CITROËN, and that the domain name is identical.

Decision:

The onus is on the Registrant to proof that the domain name is not abusive.The Adjudicator finds that there is (i) no evidence to indicate an intention by Registrant to block the name, sell it, disrupt business of Complainant unfairly or prevent it from organising its rights; (ii) no indication of a pattern of abusive registrations or incomplete whois database details; (iii) nothing to indicate the Registrant has used the name in a way to make people believe that it is being operated by the Complainant.

When some one appropriates the mark of another it must be in a manner that can not create any doubt. citroen.co.za does not meet this criteria. Registrant could have registered a name like ilovecitroen.co.za, but does not explain why he did not. Registrant also could have asked Citroen whether they would mind if he used the name. Registrant has not rebutted the onus of proof.

Q & A

Contact Us:Contact Us:

Sizwe Lindelo Snail

E-mail : ssnail@Snailattorneys.com/ Sizwe_snail@yahoo.comwww : www.snailattorneys.comTel / Fax : + 27 (012) 362 6087Fax : + 27 (086) 617 5721Cell : + 27 (083) 477 4377