South Africa: Further Protection Against Cybersquatters

Last Updated: 28 August 2014
Article by Vicky Stilwell

Most Read Contributor in South Africa, September 2016

Many African brand owners will be familiar with the remedies that exist in cases of so-called 'cybersquatting'. The brand owner who feels aggrieved by the fact that its trade mark has been registered as a domain name by a third party can lodge a complaint and request that the registration be cancelled or transferred to it. In the case of a registration, the complaint will be handled in accordance with the Alternative Dispute Resolution Regulations. But in most cases – for example with a .com or a .net name –the complaint will be handled in terms of the Uniform Domain Name Dispute Resolution Policy (UDRP). Either way, the issues will be roughly the same – the complainant needs to show that it has trade mark rights to the name, that the person who has registered the domain name (the registrant) does not have any legitimate right or interest in the name, and that the name has been registered in bad faith.

The introduction of the new gTLds has greatly increased the scope for cybersquatting. I refer here to the system where companies and other bodies can now register proprietary or generic names as top-level domain names – (generally referred to as 'gTLDs' ) and then allow other parties to register second-level domain names under these gTLDS. So, for example, the owner of the gTLD .joburg could allow businesses operating in the city to register their names under that gTLD - a restaurant called Fabio's, for example, could register

We have written about the gTLds on a number of occasions. The registration of gTLDs is being done in phases, and in the first phase some 2000 applications were lodged for roughly 1400 different names. We've written on some of the problems that have occurred, for example certain countries complaining about applications by corporations to register .amazon and .patagonia, and a successful 'community complaint' by the US polo body to an application by an apparel company to register .polo. We've also written about the fact that brand owners who think that they may want to register second-level domain names under various gTLDs have been able to make use of a facility called the Trademark Clearinghouse, which provides for both preferential registration and notification of possible conflicting applications.

To cater for the fact that, as a result of the sudden and huge increase in the number of top-level domain names, brand owners may face a far greater number of cybersquatting issues, a further dispute resolution system has been introduced. This is known as the Uniform Rapid Suspension System (URS). Readers who want a detailed assessment of this new system should seek out an article entitled The Uniform Rapid Suspension System – A New Weapon in the War against Cybersquatters by James Bikoff and others of the US firm Silverberg, Goldman and Bikoff LLP (see link below), an article I found very useful when writing this piece.

The URS is a fast system that's intended to deal with cases of clear infringement, where there are no material disputes of fact. It will deal with disputes across all the new gTLDS – all the operators of the gTLDs will be required to implement it in terms of their operating agreements – and, in due course, possibly also with disputes involving existing top-level domain names like .com. If you're aggrieved by a domain name the procedure is that you file a complaint with one of the authorised URS providers – there are only two at present, the US-based National Arbitration Forum and the Asian Domain Name Dispute Resolution Centre. You need to show that the name that you're complaining about is identical or confusingly similar to a name which you are using and for which you have a national or regional trade mark registration. You also need to establish that the registrant has no legitimate right or interest to the name, and that it was registered in bad faith.

It's all very quick. The URS provider must examine the complaint within two days of receipt and make sure that it's procedurally compliant - if it isn't, it's rejected without prejudice, meaning that a further complaint can be filed. Assuming that it is compliant, the URS provider notifies the relevant registry operator of the complaint, who locks the domain name within 24 hours. Within a further 24 hours the URS provider must notify the registrant of the complaint. The registrant then has a period of 14 days to file a response – the response must be to the point, not exceeding 2500 words. If there's no response the complaint goes to an examiner who assesses it on its merits – unusually, if the complaint succeeds the registrant can still file a response within a period of six months, in which case it's decided as a new matter and not as an appeal. Where there is a response the matter is considered by an examiner, who can either dismiss the complaint or order that the domain name be suspended for the balance of the registration period - the examiner does not have the power to order a cancellation or a transfer of the registration. An appeal is possible within 14 days of the decision, and the name remains locked during the appeal.

The URS system is therefore very useful for companies who want a domain name taken out of action quickly, without incurring great expense – the URS fees are significantly lower than those in UDRP proceedings, with the successful party getting a refund. It is, however, possible to combine the two systems – a party who has achieved a suspension of the domain name can follow this up with UDRP proceedings for a cancellation or a transfer, and if they do so within 30 days of the outcome of the URS complaint a fee credit takes place.

I understand that the first URS decision has been issued and that it involved a complaint lodged by Facebook to the domain name The decision came out in under five weeks. Unsurprisingly, the examiner had little difficulty with this one, finding that the names were confusingly similar, that the registrant had no legitimate right or interest to the name, and that it had been registered in bad faith in order to generate click-through revenue. The domain name was suspended.

The URS is likely to be a useful alternative to the UDRP in appropriate cases, and it will become increasingly important as the number of gTLDs grows. It's good news for brand owners.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.