New regulations for SA domain name disputes

crbuys

Legal Expert: Internet
Joined
Sep 23, 2004
Messages
126
Hellkom, Neverflysaa And Landroversucks Are Ok

Hi all,

The .za ADR regulations would not threaten critical sites that use domain names incorporating the names or trademarks of those they critisize.

Hellkom.co.za, neverflysaa and landroversucks.co.za are OK but only if used for "fair" criticism. In other words, a person cannot simply register a domain name like ****myadsl.co.za and threaten to use it unless paid not to. The site must be used for fair critisizm otherwise it amounts to trademark infringement, or in the language of the regulations - an abusive registration.

Regards,

Reinhardt Buys
 

crbuys

Legal Expert: Internet
Joined
Sep 23, 2004
Messages
126
So far so good

Hi all,

Buys Inc. Attorneys submitted a dispute in terms of the .za ADR regulations to SAIIPL last week (regarding the domain name saleshire.co.za).

The response we got was fast, professional and effective - all online and much easier / cost effective than traditional court litigation.

Unfortunately the registrant of the saleshire.co.za domain agreed to transfer the domain to our client before the matter could be adjudicated.

As I argued previously on this forum, the ADR regulations will bring fast and effective relief to many who lost their domain name to local cybersquatters... but there are also serious concerns / problems like the R10 000 arbitration fee that a complainant must pay. Unlike court cases, the arbitrators cannot make damages awards against registrants - so the cybersquatters get a free ride and the complainants must fork out the money, regardless of whether the dispute is decided in favour of the complainant or not. Sure, R10 000 is much cheaper than court litigation - but at least you get your money back when you win in a court!

The possibility for abuse is self evident... we already had more than 3 domain name disputes that was settled by simply paying the cybersquatter less than the R10 000 it would cost to arbitrate the dispute. One cybersquatter wrote to us and claimed: "To get the domain name through arbitration would cost your client R10 000, I'll save you all the time and transfer the domain name if you pay me R9500 now". Why not? You save R500 and the trouble of lodging a complaint.

Want to make a fast buck? Simply register as many trademarks as possible as domain name with nasty words like sucks and **** and sell them back to the trademarks holder at a price marginally lower than the R10 000 it would in any event cost the trademarks holder to get the domain back through the .za regulations.

One solution for trademark holders is to register their names with the words suck and **** before cybersquatters can do so. (Rudolph - I hope you already own ****myadsl.co.za and myadslsucks.co.za!).

How can this problem be solved? In the UK domain name disputes are first subject to free mediation and only if such mediation fails to resolve a dispute is it referred to what the Brits refer to as an expert determination. According to Nominet (who administers .uk domain name disputes, more than 50% of disputes are resolved through mediation - at no cost to the parties).

Another solution will be to amend the regulations so that damages awards can be made against cybersquatters or that complainants get their R10 000 back if they are successful...

Regards,
 
Last edited:

crbuys

Legal Expert: Internet
Joined
Sep 23, 2004
Messages
126
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,
 
Last edited:

rpm

Admin
Staff member
Joined
Jul 22, 2003
Messages
66,062
The possibility for abuse is self evident... we already had more than 3 domain name disputes that was settled by simply paying the cybersquatter less than the R10 000 it would cost to arbitrate the dispute. One cybersquatter wrote to us and claimed: "To get the domain name through arbitration would cost your client R10 000, I'll save you all the time and transfer the domain name if you pay me R9500 now". Why not? You save R500 and the trouble of lodging a complaint.
Hi Reinhardt

This is an obvious flaw in the system. With the smaller domain name squatters R 10 000 is most likely more than they planned to get for the domain name anyway, so it does not influence their behaviour. And as you mentioned they still run no risk for abusive behaviour.

BTW: Thanks for sharing…
 

orange

Well-Known Member
Joined
Jun 13, 2005
Messages
170
Hi Reinhardt

<SNIP> And as you mentioned they still run no risk for abusive behaviour.

Not entirely true - under South African law - you can claim for damages, and as such these people do run risk for abusive behaviour. Just not under the ADR process.

If someone is jerking you around and causing you damages unlawfully - nothing that I read in the ADR process stops you from suing them.

in short, this is an Alternate process to the court system, and is (per my reading) designed to give people relief in a much more efficient manner than the court system, at a lower cost than traditional litigation, with a well defined turn around time.

Buys' experience (the first dispute ever?) seems to indicate that the process has had the desired effect?

I am not a lawyer as stated previously ;-)
 
Last edited:

Abe

Expert Member
Joined
Jul 30, 2005
Messages
4,611
but there are also serious concerns / problems like the R10 000 arbitration fee that a complainant must pay. Unlike court cases, the arbitrators cannot make damages awards against registrants - so the cybersquatters get a free ride and the complainants must fork out the money, regardless of whether the dispute is decided in favour of the complainant or not. Sure, R10 000 is much cheaper than court litigation - but at least you get your money back when you win in a court!
This is the problem. I know there is a free option but that can only make up a small percentage of the cases. Most of my clients are very small businesses and 10K is a lot of money. The people that they are having problems with have been asking for anything between R3000 and R6000. That price would probably go up to R9500 now :(

Probably a good idea is for the committee to award the fees if the defendent is found to be underhand.
 

Abe

Expert Member
Joined
Jul 30, 2005
Messages
4,611
If someone is jerking you around and causing you damages unlawfully - nothing that I read in the ADR process stops you from suing them.

in short, this is an Alternate process to the court system, and is (per my reading) designed to give people relief in a much more efficient manner than the court system, at a lower cost than traditional litigation, with a well defined turn around time.
Suing is not an option for smaller businesses. If the 9K being extorted is too much, how can they afford to sue. Obviously there are benefits to resolving the problems quickly, but it's much easier and quicker to pay a R9500 "bribe" then to go the R10K 2 month route. The only ones that will go this route are the legitimate disputes. The extortion "scams" have just had their price determined.
 

orange

Well-Known Member
Joined
Jun 13, 2005
Messages
170
Suing is not an option for smaller businesses. If the 9K being extorted is too much, how can they afford to sue. <SNIP>

Hey - don't blame our legal system mess up on the ADR process. Fixing our legal system is a whole other ball game.

Oh - and for a one man sole trader - there's still small claims court.....
 

orange

Well-Known Member
Joined
Jun 13, 2005
Messages
170
Hi all,

<SNIP>
Regards,

So,

I've been thinking about this situation, and I'm not sure it is correct that the price for settling a dispute has been set at R10k.
If someone comes and says
crbuys said:
"To get the domain name through arbitration would cost your client R10 000, I'll save you all the time and transfer the domain name if you pay me R9500 now

I'd take that request, as it is clear evidence of an abusive registration and go through the "fast, professional and effective" procedure - stump up the extra R500 and make sure that it goes the whole hog.

What this means is that the third time this nefarious person tries this - he is labelled a cybersquatter under section 4(3) of the regulations, and court action against would probably be more likely to succeed.

Now, if the guy was more sensible, and only asked for about, say R4k, and I was in a really generous mood...... naah scrap it - I don't think I want to give in to extortion...
 

crbuys

Legal Expert: Internet
Joined
Sep 23, 2004
Messages
126
Getting damages from cybersquatters

Hi all,

Whether or not a successful ADR complainant may recover damages from a registrant will be tested soon. We are about to lodge a number of disputes on behalf of Telkom for amongst others telkommedia.co.za and telkombusiness.co.za - in both cases we have also already been instructed to proceed with civil damages claims against the registrants if the ADR disputes are settled in Telkom's favour.

Exciting times ahead.

Regards,
 

Abe

Expert Member
Joined
Jul 30, 2005
Messages
4,611
Whether or not a successful ADR complainant may recover damages from a registrant will be tested soon. We are about to lodge a number of disputes on behalf of Telkom for amongst others telkommedia.co.za and telkombusiness.co.za - in both cases we have also already been instructed to proceed with civil damages claims against the registrants if the ADR disputes are settled in Telkom's favour.
Now that just may be exciting. If a precident can be set, it may discourage cybersquatters from these types of actions.
 

Tns

Executive Member
Joined
Sep 7, 2005
Messages
5,608
As I argued previously on this forum, the ADR regulations will bring fast and effective relief to many who lost their domain name to local cybersquatters... but there are also serious concerns / problems like the R10 000 arbitration fee that a complainant must pay. Unlike court cases, the arbitrators cannot make damages awards against registrants - so the cybersquatters get a free ride and the complainants must fork out the money, regardless of whether the dispute is decided in favour of the complainant or not. Sure, R10 000 is much cheaper than court litigation - but at least you get your money back when you win in a court!

a quick way of making money!!!
 

peddytech

New Member
Joined
Oct 6, 2009
Messages
1
Domain name

Hi guys..

I'm just looking for some advice. I have a domain that I registered in 2006, the name of the domain refers directly to a program that I developed within the field of coaching and personal development. The site that is currently on the domain is totally non-commercial, it provides free advice and articles.

Recently a guy popped up demanding that I give him the domain name because he's bought the local franchise of an international company. The international company has been going for 15 years, he's been franchiseholder for 2 years in SA.

The name of his company or at least the franchise he holds is the same as the name I gave to the program I developed. He now wants me to relinquish the domain and I don't really see why I should.

The type of coaching that I do is personal development (one on one) the type of coaching they do is business-mentoring and isn't really coaching by the normal definition.. but that's semantics.. .Bottom line is that there's no similarity between their business and my website. There's no attempt to use their name (which I didn't know existed) to my benefit etc.

I must admit I'm a little annoyed with their "hi we want the domain or we'll sue" attitude. If they'd stated their case politely in the first place I probably wouldn't have had a huge problem accomodating them... Now that I've thought about it, I kinda like the domain and the project and what it does and don't really want to change it at all.

If I gave them the domain (which I won't) they would just do a re-direct to the ,com anyway.... If I feel nice I might offer them a link for anyone who finds my site by mistake.. I recon that's friendly enough...

What say you gurus? You think they would have a case? From what I can see they don't. My domain is www.actioncoaching.co.za and theirs is www.actioncoaching.com
 

ambo

Expert Member
Joined
Jun 9, 2005
Messages
2,682
What say you gurus? You think they would have a case? From what I can see they don't. My domain is www.actioncoaching.co.za and theirs is www.actioncoaching.com
If you were infringing on a locally recognised trademark at the time of registration and he can prove that you are attempting to benefit from the reputation of his business name then he may have a case. Otherwise you can tell him to get lost.

There is an interesting case where gmail.co.za was registered shortly before Google announced their webmail service. Even the big boys at Google have no rights to the domain since it existed before their trademark.

The only way he can get the domain from you is to purchase it. Ask him to make you an offer and see if the money would make it worth your while to rebuild your business under a different name. :)
 

PatrickMichael

New Member
Joined
Oct 14, 2009
Messages
4
Domain name advice appreciated

Hi,

I develop web sites and i have recently registered a domain name evolutionconsulting.co.za for a company called Evolution (evolution.co.za was not available). One of the services that Evolution offers is consulting. My client then Googled evolution consulting and came across a web site Evolution Consulting (http://www.evoco.co.za) which looks to be part of Discovery. The web site is under construction. My client has raised the question as to the right to use the domain name evolutionconsulting.co.za and whether evoco.co.za has the right to dispute the use.

I have done some reading at http://www.domaindisputes.co.za/ and have had a brief look at the ADR regulations but am not a legal person so not really qualified to make an informed decision.

Any advice, comment on whether my client is at risk?
Thanks.
 

Pieter2008

Well-Known Member
Joined
May 14, 2008
Messages
141
Ok, so say one is willing to fork out 12k. Where can one get some consultation if your case is strong or weak? Basically I need to speak to a lawyer that specializes in domain name disputes, but where can I find a "good" one and what sort of costs are we talking about? Our business is in the Northern Suburbs, Western Cape.
 
Top