The Men's Health disaster
Hi all,
The benefits of cost effective and fast resolution of domain name disputes in terms of the new .za regulations are best illustrated by considering the Men's Health domain name disaster story...
Domain names and trademarks are two very different things. And domain name disputes cannot be resolved by applying trademark law, just as trademark disputes cannot be resolved through the application of domain name law. If nothing else, the 2006 High Court judgment in the matter of Men’s Health (Rodale) v Men’s Clinic International confirms this… domain name disputes cannot be resolved through the application of trademark law.
The menshealth.co.za domain name was registered in 2001 in the name of Men’s Clinic International (a health provider specializing in male sexual problems). When Touchline (who is licensed to publish and distribute the Men’s Health magazine in South Africa) claimed the domain name soon afterwards, Men’s Clinic refused to let go thereof and so a very long, very expensive and very unnecessary court saga began.
Since there was no alternative dispute resolution for .za domains in place at the time, Men’s Health had no alternative but to litigate in terms of the Trademarks Act and applied for an interdict prohibiting Men’s Clinic from registering and using the menshealth.co.za domain name (based on its Men’s Health trademark registered in 1992). In response, Men’s Clinic instituted a counter application for the expungement of the Men’s Health trademark (based on the fact that it is generic).
Ismail AJ decided against Men’s Health, dismissing its application with costs and ordering the expungement of the Men’s Health trademark from the register.
Men’s Health appealed and shortly before the appeal would have been heard, the parties reached a settlement agreement – Men’s Health can keep their trademark and Men’s Clinic can keep the menshealth.co.za domain name (notwithstanding four years of litigation and almost half a million paid towards legal fees).
Lesson – trademark law cannot be used to settle domain name disputes.
Will Men’s Health finally get their domain name in terms of the .ZA Regulations?
No, although they would probably succeed with a complaint under the .za regulations, a clause in the settlement agreement prohibits them from ever again claiming rights to the menshealth.co.za domain name.
Looking for the website of Men’s Health – try menshealthsa.co.za.
Looking for justice...? Well, Men's Health should simply register mensclinicsucks.co.za and sell it for anything less than R10 000.
[This is obviously my tongue in the cheek remarks and not formal legal advice!]
Regards,