In today's increasingly digital world, safeguarding intellectual property rights online is more crucial than ever. A prominent threat to these rights is the ability of third parties with nefarious intentions, to "set up shop" with relative ease, in the online market space. This practice can severely damage a brand's reputation, dilute its identity, and create confusion among consumers, highlighting the necessity for prompt action. In South Africa, the instinctive response may be to pursue High Court litigation based on trade mark infringement, in instances where online trading is taking place. An effective approach that is often overlooked, however, is to institute domain name complaint proceedings for adjudication by the South African Institute of Intellectual Property Law (SAIIPL).
Recently, our client ("Havells"), the proprietor of the HAVELLS trade mark, discovered the unauthorised registration and use of the domain name <havells.co.za> within the South African domain name sphere. In this instance, the Registrant of the domain name set up an active website using the HAVELLS word and device mark, and offering for sale various goods covered by our client's South African trade mark registrations, which included lighting and electrical equipment.
In an attempt to resolve the matter amicably, our client reached out to the Registrant via email and WhatsApp. The Registrant, whose WhatsApp profile featured the HAVELLS logo, proposed an exorbitant price for the domain name, demonstrating a clear intention to exploit the brand's goodwill.
Considering that the products covered by Havells' relevant registrations were being made available for sale, using the HAVELL trade mark, the registrant's actions constituted direct trade mark infringement in terms of Section 34(1)(a) of the Trade Marks Act No. 94 of 1993, as well as infringement of the well-known trade mark in terms of Section 34(1)(c). It was clear that the domain name havells.co.za in the hands of the Registrant, amounted to an abusive registration. In light of this, our client instructed us to file a domain name complaint, considering that the complaint would be considered and a decision handed down, within a couple of weeks. The deciding factor in pursuing a domain name complaint rather than High Court proceedings, was that the online shop at havells.co.za could be shut down relatively quickly.
Our evidence highlighted that the Registrant was fully aware of our client's trade mark rights and the significant goodwill associated with it. By incorporating our client's trade mark into the domain name and linking the domain name to an active website, utilising our client's identical trade marks and offering goods covered by its HAVELLS registrations, it was evident that the Registrant aimed to unfairly take advantage of our client's well-established reputation.
On 14 October 2024, the SAIIPL Adjudicator ruled in favour of our client, ordering the transfer of the disputed domain name. The summary decision, under case number ZA2024-00510, can be accessed here: CASES & DECISIONS. Havells' Legal Counsel, Roma Arora and Harsh Aggarwal, welcomed the ruling as this decision not only reaffirmed our client's trade mark rights, but also prevented a situation where the Registrant would have profited from its bad faith actions.
This successful domain name dispute resolution illustrates that, although High Court litigation may appear to be the most direct solution, utilising the domain name complaint process can provide a more efficient and cost-effective alternative. By opting for this approach, where appropriate, businesses can address online trade mark infringement issues, protect their brand integrity, and minimise potential reputational harm.
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.
