A domain name is a unique name that identifies a website and is allocated on a first-come first-served basis. Generally a business owner will use the domain name to identify its goods or services and will incorporate its trade mark in the domain name. However, because the domain name registration process is on a first-come first-served system, a situation that often arises is where your chosen domain name has already been taken despite you having incorporated the trade mark.
If faced with this dilemma you generally have three options available to you: either you can attempt to purchase the domain name, pursue civil litigation for trade mark infringement (if you have a registered trade mark and you are dealing with a South African based domain name) or you can engage in the South African Alternative Dispute Resolution (“ADR”). Litigation is often lengthy and prohibitively expensive and if the owner of the domain name is not willing to sell the domain name you are left with the option of lodging a complaint the .co.za domain with the ADR. The ADR proceedings follow international norms. In order to succeed in an objection, you need to prove three things:
- that you have rights to a name;
- that the domain name is identical or similar to your name; and
- that the domain name is “abusive” in the hands of the registrant.
To be declared to be an abusive registration, the domain name must have been registered in a way that took unfair advantage of, or was unfairly detrimental to, the complainant’s rights. If so, the domain name will be transferred to the complainant. Unlike court litigation which can take months, this is a resolution that can be reached relatively swiftly.
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