Have you ever encountered a situation where you come across a domain name that’s very similar to another familiar one? Perhaps it is essentially the same but spelt slightly differently, or it uses a play on words linked to a well-known brand or trademark?
These similarities can be very confusing to customers, and might even be deliberately misleading. Therefore, they often lead to disagreements between the registrant of the “copied” domain name and the owners of the original or trademarked domain and brand.
When this happens, the parties involved can register a formal dispute, and have the matter resolved through arbitration. This is known as a “Domain Disputes”.

What is Domain Disputes?

Domain Disputes is a platform meant to be used by third parties who want to complain about a domain name which infringes on their rights, or the domain name being abusive in the hands of the Registrant. Only domain names registered in the .co.za, .org.za, .net.za and .web.za second level domains are open to the Domain Disputes platform. Domain Disputes offer highly qualified neutral panelists, through expeditious administrative procedures, and overall impartiality and credibility. This platform was started in 2007 when the SAIIPL was accredited by the Department of Communications to be the ZAADRP (ZA Alternative Dispute Resolution Provider) dispute resolution provider. The SAIIPL appointed Domain Name Services (Pty) Ltd (DNS-ZA) to administer the Domain Disputes process in 2007, and DNS-ZA is still administering the Domain Disputes process till to date.

A domain name dispute is a legal complaint made on the grounds that a domain name (a proprietary string of language that is registered and recognized by the Domain Name System) has been inappropriately and illegitimately used or assigned. Domain names are typically legitimised on the basis of trademark law, which frames the manner in which domain name disputes are generally validated and resolved.

To understand how this process works, let us look at a real example, involving a well-known brand, that was lodged on DomainDisputes.co.za, and successfully resolved early in 2022.

The case [We Buy Cars (Pty) Ltd VS Christian Winterbach]

The complainant in this case was We Buy Cars (Pty) Ltd, the largest reseller of pre-owned vehicles in South Africa. The registrant was the listed owner (or registrant) of the domain name webuycarsincapetown.co.za.

The grounds of the complaint was that the addition of “incapetown” did not distinguish the disputed domain name from the complainant’s trademark. In addition, the fact that the complainant’s services are similar in function and area of work to the registrant, was likely to cause confusion, deception, and frustration for consumers, who were likely to mistake the one for the other. This would result in the original trademarked business losing customers, as well as the public’s trust. This, in turn, would negatively affect the We Buy Cars’s reputation and brand integrity.

The case was lodged with DomainDisputes.co.za on 09 March 2022 by Adams and Adams, who are the legal representatives of the Complainant. The registrant was informed of the Dispute lodged against them on 10 March 2022, and they were given 20 business days to file their Response.
No Response was filed by the Registrant and this led to this case resulting in a summary decision. Summary decision is an outcome to a case that was unopposed. The adjudicator ordered that the domain name webuycarsincapetown.co.za be transferred to the complainant.

Conclusion 

Domain Disputes cases are resolved in approximately 3 months. However, cases leading to a summary judgement are resolved faster because they are not opposed. The following outlines the process leading to a summary judgement:

  • When a complaint is lodged, the Administrator ensures that the dispute document complies with the provisions of Regulation 16 of the ADR Regulations, and confirms that the dispute fee has been paid. The Administrator also notifies the second level administrator to lock the disputed domain name to prevent updates, transfers or deletions.
  • Once the above is in order, the Administrator forwards the dispute to the Registrant. The Registrant is then given 20 days to file its response.
  • If the Registrant does not file any response within the given time period, the Administrator will appoint an adjudicator who will provide a summary judgement.
  • The adjudicator should provide a summary judgement within 14 days of being appointed.

An opposed case is a case where the Registrant would have filed a Response to the Dispute. Such a case will go through an Informal Mediation process before a final judgement is given by an adjudicator. Informal Mediation is an impartial mediation process that is conducted by the .ZA Domain Name Authority (ZADNA), where they facilitate a resolution acceptable to both parties. If a resolution is reached during Informal Mediation, the case will be settled and no judgement will be provided. Otherwise, if no resolution is reached, the Administrator will appoint an adjudicator to provide final judgement.

For more information on Domain Disputes or to lodge a domain dispute, please visit the Domain Disputes website at www.domaindisputes.co.za.

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