IP ENSight | 7 March 2018

Domain names: getting real

by Delene Bertasso

By its own very high standards, Real Madrid is not having the greatest of soccer seasons, although it has, at least, triumphed in a recent domain name case.

The decision in the case of Real Madrid Club de Futbol v Jose Delfim Mendosa de Vasconelos was handed down by panelist Eduardo Machado on 24 January 2018. The issue in the case was straightforward: an individual in Brazil registered the domain name www.realmadrid.com.br. He used it for a website that contained information and news about the football club and its players, and provided advertising space. Real Madrid lodged a complaint at the World Intellectual Property Organization’s Arbitration and Mediation Center using the Uniform Domain Name Dispute Resolution Policy. The club established that it has trade mark registrations for the name Real Madrid in many parts of the world, including in Brazil. 

The panelist held that the disputed domain name was sufficiently similar to the club’s registered trade mark (MCF Real Madrid) for it to be transferred to the club. As quoted in Trademarks & Brands Online, he stated that: “The disputed domain name incorporates the Real Madrid brand, adding only the country code top-level domain .com.br which, as we all know, is not able to rule out the similarity between the complainant’s trade mark and the disputed domain name.” The panelist held that there was no proof that the Brazilian registrant had any legitimate name, brand, product or service associated with the disputed domain name, which meant that he didn’t have any rights or legitimate interests in the domain name. He further found that, as the Real Madrid logo appeared on the homepage of the website, this clearly evidenced bad faith on the part of the registrant. 

Many South African brand owners have experience in the domain name dispute arena. They know that matters of this nature were traditionally handled by way of trade mark infringement or passing off proceedings, and sometimes still are. In the 2015 case of Fairhaven Country Estate (Pty) Ltd v Shaun Harris and G Studio Branding Agency, a complicated dispute regarding a domain name was resolved using the law of passing off. 

Nowadays, the vast majority of domain name disputes pertaining to .co.za are handled through the alternative dispute resolution (“ADR”) procedure that was established by the regulations passed under the Electronic Communications and Transactions Act, 2002. This procedure is very similar to the procedure that was followed in the Real Madrid matter.

The South African ADR procedure accepts that with domain names,  as with trade marks, it’s not always a case of “first come, first served”. The regulations say that a domain name can be opposed by someone who has rights to a name or trade mark that is “identical or similar” to the domain name, if the domain name is “abusive”. 

A domain name may be abusive if it takes unfair advantage of another party’s rights, if it is intended primarily to frustrate the rights of another party, or if it is used in a way that is detrimental to another party’s rights. The right can be a registered trade mark or a common law right derived through use. The regulations provide guidelines as to what constitutes an abusive registration; namely, if the domain name was registered specifically to disrupt another party’s business or prevent another party from itself registering the name; if the domain name is used in a way that suggests a connection with another party’s business and therefore causes confusion; or if the domain name was registered in order to extract money from the true owner. On the other hand, if the person who registered the domain name is making genuine commercial use of the name, this might indicate that it is not abusive. 

Another basis for attacking a .co.za domain name registration is that it is “offensive”. An offensive registration is one that is contrary to good morals or offends any group of people. 

Despite the ADR procedure for domain names, occasionally the High Court will have an opportunity to examine a .co.za domain name dispute. This might happen in the case of a review. 

In the case of Day Ni (Oded Dayani) v Talium Investments (Pty) Ltd and 4 others, the court upheld the decision of the panel of adjudicators and recognised that certain trade mark principles are applicable in domain name disputes. The case dealt with the issue of whether or not the domain name registrations kingo.co.za and kingonumbers.co.za were abusive. The panel held that they were and ordered that they be transferred to the complainant. The court said that, even though the registrant had registered the domain names first, the complainant had strong rights to the trade mark Kingo through use, and Kingonumbers would, therefore, be seen as a natural extension of Kingo and cause confusion. 

In the 2015 case of Global Vitality Incorporated v Enzyme Process Africa (Pty) Ltd, a court held that it had jurisdiction to deal with disputes involving the ADR regulations. In this case, a local distributor had registered a domain name comprising the name of its foreign principal in the US. The principal asked the court to order that the local distributor transfer the domain name. The judge found that this was an abusive registration in that it took unfair advantage of, and was unfairly detrimental to, the principal’s rights. As a result, the domain name was transferred to the principal.

Therefore, it is clear that South African law is well-equipped to deal with disputes involving .co.za domain names. 

Reviewed by Gaelyn Scott, director and head of ENSafrica's IP department. 

 

Delene Bertasso

trade mark attorney | senior associate | IP
dbertasso@ENSafrica.com
cell: +27 83 399 6172

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