Domain Name Objections – A Necessary Tool In Any Enforcement Strategy

In this digital age, domain name objections are unavoidable for any brand owner, when enforcing their trade mark rights.

According to the 2024 Domain Name Report published by the World Intellectual Property Organization ("WIPO"), the number of domain name disputes is 'stubbornly' high. What follows is some detail on domain name disputes.

There's a dispute resolution policy for domain names

This is called the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP has been adopted by the regulatory body, the Internet Corporation for Assigned Names and Numbers ("ICANN").

Rules for domain name owners

All disputes regarding domain names are conducted according to the 'Rules of Procedure'.

Warranties are required

Domain name owners are required to submit certain warranties confirming that:

• the registration does not, to the best of the domain name owner's knowledge, infringe any third party rights;
• the domain name was not registered for unlawful purposes;
• the domain name will not knowingly violate any laws.

An annual report

The annual WIPO Domain Name Report helps trade mark owners, legal professionals and policymakers keep up with the challenges in safeguarding intellectual property in the digital age.

Rights to a domain name

The UDRP enables users to demonstrate their rights or interests to a domain name. This might involve:

• using or making preparations to use the domain name in connection with a bona fide offering of goods or services;
• the fact that the user has been commonly known by that name;
• the fact that the user has made legitimate non-commercial or fair use of the name without attempting to divert custom.

Disputes

A domain name registrant ("Registrant") is required to submit to a mandatory administrative proceeding in the event that a third party ("Complainant") claims that:

• the Registrant's domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
• the Registrant has no rights or legitimate interests in respect of the domain name;
• the Registrant's domain name has been registered and is being used in bad faith.

Bad faith

This will exist where:

• circumstances suggest that the domain name was acquired for the purpose of selling it to the complainant, who is the owner of the trade mark;
• the domain name has been used for the purpose of creating a likelihood of confusion or endorsement.

But there's no bad faith, for example where...

The domain name was acquired before the Complainant had rights in the trade mark in question. Or the domain name was acquired or registered in good faith by the Respondent.

Bad faith – an example involving Philip Morris

WIPO issued a decision in the UDRP case of: Philip Morris Products S.A. v Konstantin Danildi

The decision was that Danildi's use and registration of the domain name heetflavrs.com was in bad faith, given that Danildi was aware of Philip Morris Products' HEETS trade mark.

What's happening in Africa?

A number of cases affecting Africa are mentioned in the report. Such as African Union vs. africanunion.com

The African Union ("AU") filed a UDRP complaint against the registrant/owner of the domain name africananunion.com, claiming it was identical to its trade mark. The complaint was upheld on the basis of bad faith registration by a registrant with no legitimate interest in the domain.

Lagos State Government vs. lagosstate.com

The Lagos State Government in Nigeria opposed the domain name lagosstate.com – it claimed that it was misleading and infringed its rights. The panel ruled in favour of the Lagos State Government, highlighting public interest and the government's legitimate rights to the name.

South African Breweries vs. sab.co.za

South African Breweries ("SAB") filed a dispute over a domain name that was registered in bad faith by a third party. The panel ordered the transfer of the domain name to SAB, affirming that the registrant had no legitimate interest.

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.