South Africa: Domain Names - The High Court Has Its Say

Last Updated: 25 June 2013
Article by Rachel Sikwane

Most Read Contributor in South Africa, February 2019

Domain names and trade marks are inextricably linked. The reason for this is simple – when a company needs to decide on a name at which it wants people to find it on the Internet, it generally opts for one of its own trade marks. As a result, the issues that crop up in trade mark disputes often crop up in domain name disputes too. Although there's an added complication with domain names – unlike trade mark registrations, domain name registrations are not limited to particular product areas or particular countries.

When domain names first appeared on the scene, disputes as to who was entitled to the registration of a particular name were handled by the courts, usually by way of trade mark infringement or passing-off proceedings.  But now there are Alternative Dispute Resolution (ADR) procedures that relate to the various domain names. So, for example, disputes regarding domain names are handled by way of the ADR procedure that was established by the Regulations passed under the Electronic Communications and Transactions Act (ECT Act) 25 of 2002.  These disputes are heard by either a single adjudicator or a panel of three adjudicators – the adjudicators tend to be experts in trade mark law.

The ADR procedure that we have ensures that the normal first-come-first-served system does not always apply to domain name registrations. It provides that a company that is aggrieved by a domain name registration can lodge a complaint if the domain name registration is ‘abusive'.  The Regulations say that a domain name registration may be abusive for a number of reasons, for example 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's detrimental to another party's rights. The right in issue can be a registered trade mark right, or a common law right derived through use.

The Regulations go on to list certain factors that might indicate that a registration is abusive. These include the fact that it was registered specifically to disrupt another party's business or prevent another party from registering the name, or the fact that it's used in a way that suggests a connection with another party's business.  Factors that might indicate that it's not abusive include the fact that the person who registered it is making genuine commercial use of it.  Over the years there have been a large number of ADR decisions and well-established trade mark principles are frequently applied.

As a result of the ADR procedure, domain name issues seldom make it to the High Court. This makes the recent Gauteng North High Court decision in the case of Day Ni (Oded Dayani) v Talium Investments (Pty) Ltd and 4 others worth looking at. This was a review of a decision of a panel of adjudicators and it is, as far as I'm aware, the first such review to be heard by the High Court.  The court concluded that the decision of the panel of adjudicators was sound and that it should stand. Although the review dealt with what are basically procedural matters, the decision is interesting for a number of reasons.

First, the court recognised that trade mark principles are applicable in domain name disputes.  The case dealt with the issue of whether or not domain name registrations for the names and were abusive.  The panel had held that the registrations were abusive and that they should be transferred to the complainant – this was based on the finding that, even though the registrant had got in first with a domain name registration, the complainant had stronger rights to the trade mark Kingo through use, whereas Kingonumbers would be seen as a natural extension of Kingo. The review court used this quote from the panel's decision: ‘The crux of this decision is who owns “Kingo”? It is settled law that the person who has appropriated a mark for use in respect of goods or services as a trade mark, may claim to be the proprietor. Legal precedent defines “appropriation” as the origination, adoption or acquisition of a mark (Victoria's Secret v Edgars Stores Limited 1994 (3) SALR 739 (A).' The court also used this quote from the Victoria's Secret case, where the Appeal Court said this:  ‘In determining which of the competing applicants should prevail, the guiding principle is encapsulated in the maxim ...he has the better title who is first in point of time. ...In a situation in which competing applications for the registration of the same or similar marks are filed in the RSA, the general rule is, that all else being equal, the application prior in point of filing, should prevail and be entitled to proceed to registration.  In a “quarrel' of that kind, “blessed is he who gets his blow in first.'''

The second reason why the decision is interesting is because it makes it clear that the same robust considerations that apply to High Court proceedings apply to ADR proceedings.  What had happened here was that the complainant had filed a complaint (or dispute), the registrant had filed a response, and the complainant had filed a reply to that response – this is the normal procedure. In the review proceedings, however, the registrant complained that the complainant had introduced new facts in the reply, and that the adjudicators had relied on these new facts without giving the registrant an opportunity to deal with them.   But the court was unimpressed, saying that the complainant had never sought permission from the adjudicators to contradict what was said in the reply, nor to submit a further response. This despite the fact that the ADR Regulations do make provision for the filing of further evidence or documentation in appropriate cases.

Which leads us on to the third reason why the decision's interesting. The court thought that it was very relevant that the complainant had been represented by an attorney in the ADR proceedings, that the attorney had not objected to the further evidence or sought leave to respond to it, and that no explanation had been offered for this oversight. The court quoted from the very old case of Salojee v The Minister of Community Development 1965 (2) SA 135 (AD), where the Appeal Court said this: ‘There is a limit beyond which a litigant cannot escape the results of his attorney's lack of diligence or the insufficiency of any explanation tendered... The attorney, after all, is the representative whom the litigant has chosen for himself and there is little reason why... the litigant should be absolved from the normal consequences of such a relationship, no matter what the consequences of the failure are... If he relies upon the ineptitude or remissness of his own attorney, he should at least explain that none of it is to be imputed to himself.'  So yes, what the court's saying very clearly is that you need to have a good attorney on your side, from the outset.

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.

Similar Articles
Relevancy Powered by MondaqAI
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”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions