Most Read Contributor in South Africa, September 2016
A South African university has successfully objected to a domain
name that incorporates the university's nickname.
North-West University ("NWU"), once
an exclusively Afrikaans-language institution that's situated
in the city of Potchefstroom, and that was formerly known as the
Potchefstroom University College – or PUK – for short
(the Afrikaans word for "college" starts with
"k"), opposed a registration for the domain name
Many readers know that South African universities are volatile
places right now, and one of the issues that bedevils them is
language policy. The name propuk.co.za was used by a group of NWU
alumni who are seemingly associated with a primarily Afrikaans
trade union called Solidarity, and the site made it clear that the
aim of those associated with it was to ensure that Afrikaans is
retained as a language of tuition at NWU.
The South African Alternative Dispute Resolution
("ADR") proceedings for domain names
follow international norms. In order to succeed in an objection,
you need to prove three things:
that you have rights to a name;
that the domain name is identical or
similar to your name; and
that the domain name is
"abusive" in the hands of the registrant.
The domain name registration will be abusive if it was
registered in a way that took unfair advantage of, or was unfairly
detrimental to, the complainant's rights. Examples of abusive
indications that the name was
registered in order to be sold or to block a registration by the
indications that the registration was
acquired to disrupt the complainant's business, or to prevent
the complainant from exercising its rights;
indications that the name is used in
a way that causes confusion; and
indications that the registrant is a
cyber-squatter; in other words, someone who is in the habit of
seeking abusive registrations.
In the earlier hearing, the adjudicator accepted that NWU has
rights to the name PUK (it has both trade mark registrations and
common law rights), and accepted that the names PUK and PROPUK are
similar, but rejected the suggestion that the registration
propuk.co.za was abusive in the hands of the registrant. The
objection therefore failed.
A number of factors influenced the initial adjudicator. For
example, the fact that the domain name was being used in a
non-commercial manner, the fact that the objective was not to
disrupt the business of the university but rather to protect the
Afrikaans language on the campus, and the fact that it was unlikely
to cause confusion, because it was quite clear from the site that
it wasn't an official university site. The adjudicator also
mentioned the fact that international domain name cases tend to
lean in favour of allowing the use of trade marks as part of domain
names for the purpose of criticism, provided that "the use is
fair and non-commercial".
On appeal, this decision was reversed, but only just: two
panellists upheld the appeal, one didn't. The two who did, did
so for a number of reasons. They made much of the fact that the
applicant was linked to the trade union Solidarity, an organisation
that has political aspirations and one that supports efforts to
establish a new Afrikaans university community. They went so far as
to say that Solidarity was the real user of the name. The relevance
of this was that the domain name was being used for commercial
The two panellists also pointed to the fact that the registrant
had not adopted a non-distinctive word, but rather chosen one that
incorporated the trade mark of NWU. This, they argued, pointed to
bad faith. They went on to find that the registrant had probably
registered the name to block NWU from doing so. They also held that
the domain name was causing confusion, because certain people
believed that there was a link between the site and NWU, especially
as NWU's logo appeared on the site, together with information
regarding NWU staff.
The third panellist, however, disagreed. She said that there was
no proof of any bad faith, that there was no disruption of
NWU's business (especially as there was no proof that NWU even
wanted the domain name), and that it was quite clear to any
reasonable person that there was no connection between the site and
This has proved to be a tricky and controversial case, one that
has resulted in two qualified ADR adjudicators finding that the
registration was abusive, and two finding that it wasn't.
It's no surprise really, given how vexed the underlying issues
are in South Africa.
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 Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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”
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).