Domain name disputes – Are they worth it?

Domain name disputes – Are they worth it?
28 May 2019

ADR, UDRP and URS. SAIIPL, ICANN, WIPO, MFSD, ADNRC, and NAF. You’re probably confused, aren’t you?

What do all of these have in common? They are all legal mechanisms or regulatory bodies established to assist in effectively resolving disputes specifically relating to domain names whilst avoiding formal High Court proceedings, which can be lengthy and expensive.

In a day and age where business is conducted online, where trade marks are commercialised through websites and social media pages and where consumers want to deal with businesses online instead of face-to-face, a business’ virtual address is of the utmost importance if it wants to drive traffic to its website and conclude commercial transactions online.

So, what happens if a third party registers a domain name that incorporates your trade mark? Where do you even begin to take action and enforce your rights?

Here is a list of key points relating to domain name disputes which may assist you in determining whether you can take action:

ADR & SAIPLL

The South African Institute of Intellectual Property Law (“SAIIPL”) is accredited as a dispute resolution provider in terms of .za domain name registrations. The Alternate Dispute Resolution Regulations (“ADR”) follow a very similar procedure to the procedure followed by the World Intellectual Property Organization (“WIPO”) in its administration of Internet Corporation for Assigned Names and Numbers (“ICANN”) Uniform Dispute Resolution Policy (more detail on this procedure is provided below).

The ADR procedure entitles any party to lodge a complaint against a co.za domain if the domain name “takes unfair advantage of the rights” of that party (for example where domain names incorporate registered or unregistered trade marks) or “is contrary to law or likely to give offence to any class of persons: (for example whether the domain name amounts so racism).

Generally, it takes about 2 to 3 months to conclude a dispute before SAIIPL and the entire process is done online.

UDRP, WIPO & ICANN

The WIPO, along with a number of other qualified centres, are accredited as a dispute resolution providers in terms of gTLD domain name registrations (such as .com, .info, .net .org, and many others) and ccTLDs (Country Code Top Level Domains) a list of which can be found here.

Dispute proceedings are administered according to the procedures enacted by the ICANN Uniform Domain Name Dispute Resolution Policy (“UDRP”).

The UDRP procedure entitles any party to lodge a complaint against a gTLD or ccTLD domain if it can be shown that that party has registered or unregistered trade mark rights, if the owner of the disputed domain name lacks rights or a legitimate interest in the domain name and the domain name owner registered the domain in bad faith.

Generally, it takes about 2 to 3 months to conclude a UDRP dispute and the entire process is done online.

URS, MFSD, ADNRC & NAF

Another domain dispute option in certain instances is the Uniform Rapid Suspension System (“URS”), which applies to new gTLDs only. MFSD, ADNRC & NAF are all approved URS providers.

The requirements to succeed in URS proceedings are a lot more stringent than those of UDRP proceedings. Firstly, the complainant must own a registered word trade mark that is currently in use (or has been validated by a court). The complainant must then also prove that the domain owner has no legitimate right or interest to the disputed domain name and further that the domain was registered and is being used in bad faith.

URS complaints also hold a 500-word limit (as opposed to the 5000 word limit in UDRP complaints) and so one must be able to prove one’s case within limited scope.

Remedies in URS complaints also differ from those of ADR or UDRP proceedings. Whereas in the latter complaint the successful complainant is entitled to the transfer of the disputed domain name, in URS complaints the disputed domain name is only temporarily suspended. Therefore, a trade mark owner cannot obtain control over the domain (and it will simply point to nothing until it lapses).

Generally, it takes a few weeks (and up to 1 month) to conclude a URS dispute and the entire process is done online.

It is important to bear in mind that domain name disputes are concerned with the contents of the domain name, and not necessarily the contents of the actual website to which the domain name points.

As such, if you are a trade mark owner (with either registered or unregistered rights), and there is a third party who has registered a domain name which incorporates your trade mark, you may be entitled to prevent the use or registration of that domain name by way of one of the above mechanisms. In contrast, trade mark disputes in the High Courts can be very lengthy (with the earliest possibility of resolving a dispute being 12 months) and cost hundreds of thousands of Rands. Therefore, it only makes sense to establish whether you have a valid legal basis to launch domain name dispute proceedings.

For assistance in evaluating your rights and enforcement prospects, contact an intellectual property expert for further information and costing.

See also:

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)
Tammi Pretorius
Tammi Pretorius

Tammi Pretorius is an attorney at KISCH IP's trade mark department. Her experience includes: Trade mark searching and registration; Trade mark portfolio management; Trade mark litigation; Copyright advice and litigation; and domain name disputes

Send a legal query to Tammi Pretorius
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