A precedent setting domain name decision on 8 October 2008 awarded the mixit.co.za domain name to local mobile chat operator MXit.
Since November 2006, local domain name disputes are governed by the rules promulgated in the ZA Alternative Dispute Resolution Regulations issued in terms of the ECT Act 25 of 2002.
These rules allow for the cost-effective, fast and online resolution of .co.za domain name disputes.
To date, the SA Institute of IP Law (SAIIPL), who administers domain name disputes in terms of the regulations, resolved twenty local domain disputes. The resolution of a further four disputes are pending.
Popular mobile chat operator MXit is the most recent winner of a domain dispute when the mixit.co.za domain name was awarded to it recently.
According to Reinhardt Buys of Buys Inc. Attorneys who acted for MXit, the decision is of particular importance because it sets a number of precedents and corrected incorrect conclusions reached in previous decisions.
The mixit.co.za domain was registered by an individual, Andre Steyn, as far back as April 2005 and before MXit formally launched its services.
Although the domain name initially linked to an empty website, it was later parked in a so-called advertising revenue services called Sedo Parking.
Sedo Parking and similar online revenue services allow domain name owners to park domain names and link to websites that display keywords and phrases determined by the domain name owner who receives payment for visits to the website and clicks on the pre-selected keywords.
According to Buys, such services are often used to generate revenue from domain names that represent well known companies and trademarks.
Steyn parked the mixit.co.za domain name and associated it with keywords like ‘chat’, ‘mobile’ and even ‘mxit’.
MXit claimed that the website linked to the domain name confused MXit users and abused the MXit name for revenue generating purposes.
In response, Steyn argued that ‘mixit’ is a generic term and that he registered the domain name well before the MXit name became popular. He relied on earlier decisions that held that a complainant had to show that it had rights in a name similar to a disputed domain name at the date upon which the domain name was registered.
In her decision, senior adjudicator Charne le Roux decided in favour of MXit. According to Buys the decision sets three important precedents.
“Firstly, it was decided that a complainant only have to show rights in a name that is similar to the disputed domain name on the date of the dispute and not on the date upon which the domain name was registered”.
“Secondly it was held that parking of a domain name in an online revenue service and use of keywords related to another companies services, amount to abusive use of such a domain name”.
Le Roux decided that: “[t]he Registrant initially included key words on the domain parking site which included words directly related to the business of the Complainant, including “Chat”, “Messaging” and “Mxit”.
These references were removed subsequent to the third letter of demand that he received from the Complainant’s attorneys.
At present, the key words and advertisements that appear on the parking site attached to the Disputed Domain Name include fashion, clothing, slimming, music, jobs, movies, art, concerts, events, food, hotels and shopping.
They are not directly related to the meaning of the term “Mixit” as proposed by the Registrant, namely that it is associated with music. It is clear that the Registrant generates revenue from the sponsored links and advertisements that appear on the landing pages and as a consequence of the confusion with the Complainant’s trade mark.
The Registrant’s actions therefore do not satisfy the requirement that the Disputed Domain Name be used generically or descriptively and in fairness”.
“And lastly, it was decided that a domain name and trademark are similar if they sound the same, notwithstanding differences in spelling or appearance”.
The mixit.co.za decision may be downloaded from: http://www.buys.co.za/downloads_detail.asp?ID=54