South Africa: Calvin Klein And Protest Sites

Last Updated: 28 May 2014
Article by Rachel Sikwane

Most Read Contributor in South Africa, September 2016

'Respondent does not believe any consumer could reasonably believe the best route to finding Complainant's goods on the internet is by entering into a web browser.'

This rather self-evident line from the domain name decision in the case of Calvin Klein Trademark Trust & Calvin Klein Inc v Alan Sleator (National Arbitration Forum) – in which the president of the panel summarised the defence that was raised to the claim that the domain name should be cancelled or transferred to Calvin Klein – neatly sums up why the decision went against the company.  It is surprising that Calvin Klein decided to lodge an objection in the first place given that it has long been accepted that protest web sites have their place in today's world.

Calvin Klein's complaint went like this: we're big in the apparel and fragrances business; we have rights to the trade mark CALVIN KLEIN for these goods and we have trade mark registrations for the name; the domain name is confusingly similar to our trade mark  in that it's basically just our trade mark with a vulgar addition;  the person who has registered the domain name has no legitimate right or interest to it; on top of that, it's been used and registered  in bad faith, given that the domain name goes to a parked page. 

The individual who registered the name represented himself and filed a spirited defence that went something like this. My domain name is not confusingly similar to the trade mark because the addition of the 'common vulgarity' makes it quite clear that there's no association. I registered  the name  to use it as a protest site as part of a 'larger scheme of registering other domain names that include famous trademarks preceded by the word "fuck" so as to create a network of easily identifiable protest sites.'  Although I don't have a protest site right now, I'm 'preserving its potential as a site for consumers' voices while a much better alternative is found.' I have not tried to extract any money from Calvin Klein and I have not acted in bad faith.

The registrant then decided to add some self-deprecating humour (which made it perfectly clear that he was a Brit), which is not such a bad idea when you're hopelessly outgunned: 'It is ludicrous to imagine that I am going to triumph in any legal tussle with someone of (Calvin Klein's legal counsel) calibre. Asked to wager between a highly trained and skilled IP lawyer... and a fat balding 58-year-old, semi-retired Parish Councillor who has three unruly children, a retriever who refuses to retrieve and a permanently aloof cat who has treated us all like servants for the past 16 years, I know precisely where I would place my money. And it wouldn't be on me...'

The panel made short work of this. That's because previous decisions have said that words like 'sucks' or 'f***' - when used in conjunction with a trade mark - make it very clear that there is no connection. It referred to decisions involving the domain names and It said that these decisions show that 'common sense and a reading of the plain language of the Policy support the view that a domain name combining a trade mark with the word "sucks" or other language clearly indicates that the domain name is not affiliated with the trade mark owner.' It went to hold that, as Calvin Klein had failed to establish that the domain name was similar to its trade mark, there was no need to even consider the other two issues, namely the lack of a legitimate right or interest and bad faith.

Being a .com domain name, this matter was handled under the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers (ICANN). South African readers may be interested to know that had this been a name, the dispute would have been handled in accordance with the South African Alternative Dispute Resolution Regulations.  But the result may well have been the same. That's because our regulations say that a domain name can be opposed by someone who has rights to a name or trade mark which is 'identical or similar' to the domain name if the domain name is abusive. The term 'abusive' is widely defined to include things like registering the name in order to extract money, registering it to cause confusion, and registering it to disrupt the trade mark owner's business. But it won't be deemed to be abusive if the domain name registrant can show fair use including 'tribute' or 'fair criticism'.

Another ground for opposing a domain name under the South African regulations is on the basis that it is 'offensive'.  The term is broadly defined to include words that are contrary to good morals or likely to cause offence to any class of persons. Although one might argue that a word like 'f***' is offensive to certain people, the Regulations do suggest that the offensiveness objection has been inserted to deal with names that advocate hatred towards particular groups or incite people to cause  harm. Perhaps the issue will come up in South Africa some time!

It's interesting how domain name law does resemble trade mark law, in that it seeks to provide remedies in cases of confusion. But it doesn't go all the way – it doesn't provide remedies against a name that simply dilutes or tarnishes a well-known trade mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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