South Africa: Further Protection Against Cybersquatters

Last Updated: 28 August 2014
Article by Vicky Stilwell

Most Read Contributor in South Africa, September 2018

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 .co.za 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 www.fabios.joburg.

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 facebok.pw. 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.

http://www.americanbar.org/publications/landslide/2013-14/january-february/the_uniform_rapid_suspension_system.html

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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