- Holding on to your Website and Domain Names
A physical address is any location in the universe that can be located and identified. An address can consist of a physical description or of a combination of various co-ordinates. A “domain” is a virtual location in the universe and refers to a subset of locations on the Internet or other network which share a common element of their IP address (Like GPS co-ordinates) or which are under the control of a particular organization or individual.
If we are given an address such as “Graceland”, “the White House” or “Trump Towers”, most people would instantaneously recognize “Graceland” as the earthly address of the king of rock, “the White House” as the current address for President and Mrs Michele Obama in Washington D.C., and “Trump Towers” as the abode of the Republic Party’s candidate for election as the next President of the United States.
The position is different when we are not talking about a physical address but about a virtual, or an internet address. Internet addresses unfortunately sound and look like telephone numbers and are therefore difficult to remember and use. When the numerical elements of an internet address are translated into virtual speak to form a domain name, this can give us an easily recognizable address for and description of a business address wherever it may be located on the Internet.
A domain name takes us to an address on the internet. If someone else then squats on your domain address this person is really stealing your energy and endeavor. The law, that essential safeguard for living in societies, does what it can to protect your rights and interests to your domain.
The address of your business or home on the internet can be both important and valuable. Many people and businesses expend significant energy and funds to render their virtual location well known and easily recognizable by means of a domain name.
Particularly due to the marketing and branding value of domain names disputes relating to domain names are becoming increasingly prevalent. The ease with which a domain name can be registered and linked to a website means that any business should be watchful in protecting its intellectual property against so-called “cyber squatters”.
It is important to distinguish between a domain name and the content on a website linked to a domain name. In the event that the content of a website infringes any trade mark or copyright of another person or entity, trade mark and copyright law may provide some protection.
However, in the event that the domain name and not the contents of the website infringes a trade mark of a person or entity, then a domain name objection may be appropriate.
The two most common domain name objections in South Africa concern the .co.za and .com domains. The requirements and procedures for each is slightly different and will be discussed individually below.
.co.za domain name objection:
In South Africa .co.za domain name objections are overseen and adjudicated by the South African Institute of Intellectual Property Law (“SAIIIPL”).
In order for a .co.za domain name objection to be successful, the complainant must show the domain name in question is either an:
A domain name can be viewed as an abusive registration in the event that the domain was registered or acquired which, at the time the domain was registered or acquired, took unfair advantage of or was unfairly detrimental to the complainant’s rights. A domain name can also be viewed as abusive in the event that it is used in a manner that takes unfair advantage of or is unfairly detrimental to the rights of the complainant.
An offensive domain name registration is a domain in which the complainant can not necessarily establish a right, but the registration of which is contrary to law, contra bonos mores or is likely to give offence to any class of persons.
.com domain name objections:
The World Intellectual Property Organisation (“WIPO”) administers and adjudicates any .com domain name objection. Any domain name dispute adjudicated by WIPO is done in accordance with the so-called Uniform Domain Name Dispute Resolution Policy (“UDRP”).
In terms of the rules relating to the UDRP, a complainant must show that the domain name in question complies with the following requirements:
In the event that you are concerned about a domain name, which may infringe any of your trade mark rights, or if you require more information regarding the procedure or costs involved in lodging a domain name objection, you may feel free to contact us at any time.
If we are given an address such as “Graceland”, “the White House” or “Trump Towers”, most people would instantaneously recognize “Graceland” as the earthly address of the king of rock, “the White House” as the current address for President and Mrs Michele Obama in Washington D.C., and “Trump Towers” as the abode of the Republic Party’s candidate for election as the next President of the United States.
The position is different when we are not talking about a physical address but about a virtual, or an internet address. Internet addresses unfortunately sound and look like telephone numbers and are therefore difficult to remember and use. When the numerical elements of an internet address are translated into virtual speak to form a domain name, this can give us an easily recognizable address for and description of a business address wherever it may be located on the Internet.
A domain name takes us to an address on the internet. If someone else then squats on your domain address this person is really stealing your energy and endeavor. The law, that essential safeguard for living in societies, does what it can to protect your rights and interests to your domain.
The address of your business or home on the internet can be both important and valuable. Many people and businesses expend significant energy and funds to render their virtual location well known and easily recognizable by means of a domain name.
Particularly due to the marketing and branding value of domain names disputes relating to domain names are becoming increasingly prevalent. The ease with which a domain name can be registered and linked to a website means that any business should be watchful in protecting its intellectual property against so-called “cyber squatters”.
It is important to distinguish between a domain name and the content on a website linked to a domain name. In the event that the content of a website infringes any trade mark or copyright of another person or entity, trade mark and copyright law may provide some protection.
However, in the event that the domain name and not the contents of the website infringes a trade mark of a person or entity, then a domain name objection may be appropriate.
The two most common domain name objections in South Africa concern the .co.za and .com domains. The requirements and procedures for each is slightly different and will be discussed individually below.
.co.za domain name objection:
In South Africa .co.za domain name objections are overseen and adjudicated by the South African Institute of Intellectual Property Law (“SAIIIPL”).
In order for a .co.za domain name objection to be successful, the complainant must show the domain name in question is either an:
- Abusive registration; or
- Offensive registration.
A domain name can be viewed as an abusive registration in the event that the domain was registered or acquired which, at the time the domain was registered or acquired, took unfair advantage of or was unfairly detrimental to the complainant’s rights. A domain name can also be viewed as abusive in the event that it is used in a manner that takes unfair advantage of or is unfairly detrimental to the rights of the complainant.
An offensive domain name registration is a domain in which the complainant can not necessarily establish a right, but the registration of which is contrary to law, contra bonos mores or is likely to give offence to any class of persons.
.com domain name objections:
The World Intellectual Property Organisation (“WIPO”) administers and adjudicates any .com domain name objection. Any domain name dispute adjudicated by WIPO is done in accordance with the so-called Uniform Domain Name Dispute Resolution Policy (“UDRP”).
In terms of the rules relating to the UDRP, a complainant must show that the domain name in question complies with the following requirements:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. This would be in circumstances where the domain name in question is identical or confusingly similar to a registered trade mark of which the complainant is the proprietor.
- The registrant of the domain name in question has no rights or legitimate interests in respect of the domain name. Various factors can influence this requirement, including the fact whether the registrant of the domain name is commonly known by the domain name, even if the registrant of the domain in question has not acquired any trade mark rights.
- The domain name in question was registered and is being used in bad faith. An example of a domain registered in bad faith would be where the registrant of the domain registers the domain name in question and attempts to sell the domain to the complainant, or any other person, for an amount exceeding the registrant’s “out of pocket” expenses to register the domain.
In the event that you are concerned about a domain name, which may infringe any of your trade mark rights, or if you require more information regarding the procedure or costs involved in lodging a domain name objection, you may feel free to contact us at any time.