New Developments in .ZA Domain Name Dispute Resolution

Domain name disputes have arisen more and more frequently over the past few years with the explosion of the Internet and everything that goes with it. There have been many cases where a well known trade mark is "hijacked" and registered as a domain name by a third party who then holds the name ransom when the trade mark owner tries to register it. Marks such as NANDOS, MARKS & SPENCER, HARRODS, GOOGLE, DELL and even HILLARY CLINTON have all fallen prey to these tactics. This phenomenon, known as "cybersquatting", is only one of the many different kinds of disputes which can arise in relation to domain names.

Domain names are registered on a first-come-first-serve basis and there is no regulation as to the kind of domain names which can be registered. Action can only be taken after the domain name is registered, using whatever legal means possible to cancel the registration.

In the case of a domain name which incorporates a registered trade mark, it is possible in most jurisdictions worldwide to sue a domain name holder for trade mark infringement. Court proceedings are, however, both costly and time consuming.

For this reason, and to provide some regulation to a largely unregulated industry, in the late 1990’s, the United States Department of Commerce created ICANN, the Internet Corporation for Assigned Names and Numbers. ICANN, in turn, established a dispute resolution policy for administering domain name conflicts for certain top level domains. This policy, known as the UDRP (the Uniform Domain Name Dispute Resolution Policy) has been adopted by all domain name Registrars in the .biz, .com, .info, .name, .net and .org top level domains. Disputes which arise in relation to these domains can be resolved by filing a complaint with an approved dispute resolution service provider. Approved providers include, for example, the National Arbitration Forum and the World Intellectual Property Organisation (WIPO) Centre for Arbitration and Mediation. An approved provider such as WIPO consequently has international jurisdiction to mediate disputes arising in relation to most of the commonly used domain names.

The introduction of the UDRP has enabled South African trade mark owners to take action in cases where it would not normally be possible to sue in South Africa - for jurisdiction reasons. For example, in the case of a .com domain name, where the .com Registrar is based in the USA, a South African court has no jurisdiction to enforce an order for the transfer of a .com domain name against the US Registrar. Lodging a complaint with WIPO, on the other hand, would achieve this result.

The South African co.za domain is not regulated by the UDRP and it is not possible to lodge a complaint in relation to a co.za domain with WIPO. This has made things difficult for South African trade mark owners as the only possible action which a trade mark owner in South Africa can take is to institute court proceedings. However, a new procedure which is very similar to the procedure followed by WIPO in its administration of the UDRP has now been introduced in South Africa.

The procedure has been introduced as a result of the Electronic Communications and Transactions Act No. 25 of 2002. This Act provided for regulations to be issued relating to domain name dispute resolution in South Africa. The regulations were published in November last year, effectively introducing an alternative dispute resolution procedure in the case of domain names which can be used instead of going to court.

As in the case of the UDRP, the regulations allow for the appointment of certain approved providers to administer the dispute resolution procedure. In April of this year, it was announced that the South African Institute of Intellectual Property Law (SAIIPL) and the Arbitration Foundation of South Africa (AFSA) have both been accredited as dispute resolution service providers under the regulations. Consequently, as of 1 April 2007, it is possible to lodge a complaint in connection with a co.za domain name to either of these bodies.

The regulations specify the circumstances under which complaints can be lodged and the procedure to be followed. In essence, any party can lodge a complaint against a co.za domain if the domain name qualifies as either an "abusive registration" or an "offensive registration". An "abusive registration" is a registration which takes unfair advantage of the rights of the complainant. This covers all rights, of whatever type, such as intellectual property rights, commercial, cultural, linguistic and personal rights. An "offensive registration" is contrary to law or likely to give offence to any class of persons. The regulations consequently open the door wide for complaints to be lodged. Complaints can be filed against domain names which incorporate registered trade marks or even trade marks which are not registered but which are well known. Complaints can also be filed against domain names which amount to hate speech or racism or any other such names which are contrary to public policy.

If the complainant is successful in the case of an abusive registration, the domain name registrant will be ordered to transfer the domain name to the complainant. In the case of an offensive registration, the domain name will be deleted and prohibited from future registration. It is possible to appeal the decision of the adjudicator – either to a panel of three adjudicators or to the court.

The new regulations intend to provide a cost efficient, fast and efficient resolution to domain name disputes. The fee for lodging a complaint with the SAIIPL is R10 000-00 for a single adjudicator panel. It is also possible to request a three adjudicator panel, at the cost of R24 000-00. Although it is likely that in many cases trade mark owners will request their attorneys to prepare the complaint and will consequently incur additional costs, the total costs are still likely to be significantly lower than the costs involved in instituting formal court proceedings. In addition, the SAIIPL procedure should, in most cases, be finalised within a matter of months, as against court proceedings which could, in many cases, take more than a year.

The new regulations intend to provide a cost efficient and expeditious resolution of domain name disputes. The development is to be welcomed and goes a long way to ensuring that South Africa is keeping pace with international developments.

Megan Reimers
Spoor & Fisher
www.spoor.com

2007-07-02