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Lecture - Domain Names/ Trade Marks

Internet Law 2013
by

Mark Leiser

on 4 November 2013

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Transcript of Lecture - Domain Names/ Trade Marks

Domain Names
Trade Marks
vs
TM Def:
Any mark which distinguishes
the goods or services of one person from
those of another
DN Def:
A unique label identifying a particular numeric IP address on the internet and consisting of a Second Level Domain, followed by a Top Level Domain

for example:
Third Level Domain
Top Level Domain/
Country Code
Second Level Domain
(cc) image by jantik on Flickr
web.
co.
.za

(cc) photo by medhead on Flickr

TRADE MARKS
Territorial
Indicate origin
Define goodwill
Specific to Goods/ Service
Test of Confusing Similarity/
Likelihood of Deception or Confusion
Cannot be descriptive
Any distinctive symbol
Registration Procedure is lengthy
and relatively expensive
Renew every 10 years
Oppositions/ Cancellations follow
High Court Procedure
DOMAIN NAMES
Indicates Location
No geographical boundaries
First come, first served
Exact matches
Can be entirely descriptive
Must be alphanumeric symbols
Can contain another's trade mark
Cannot contain distinctive elements
of another's mark
Channel of commerce
Form of Communication
Quick and Cheap to Register
Shorter Renewal Terms
Simplified Cancellation Procedure - ADR Systems
ADWORDS / PAY-PER-CLICK SCHEMES
Louis Vuitton v Google
Interflora v Marks & Spencer
New gTLD Programme

How does this impact Trade Mark Owners?
Human and - Operating a Registry
Financial - Defensive Registrations
Resources - Policing and Enforcement
Weak Protection Measures
NEW FORMS OF INFRINGEMENT
Traditionally: 3 Forms of TM Infringement
1. Confusing Similarity

2. Passing Off

3. Dilution
NEW FORMS OF INFRINGEMENT
1. Cyber-Squatting

2. Gripe-Sites/ Fan-Sites

3. Fraudulent Notifications/ DN Front-Running/
DN Tasting/ Kiting

4. False Affiliation/ Traffic Diversion/
Pay-per-Click Schemes
Portakabin Ltd v Primakabin BV
EUROPE
USA
L'Oreal v eBay
Playboy v Netscape

Google Inc v American Blind & Wallpaper Factory Inc (settled)
South Africa
ECTA (2002) and Regulations
www.domaindisputes.co.za
2 Complaints:
Abusive
Registrations
Offensive
Registrations
(Limited to .co.za)
Reg 4: Evidence of Abusive Registration

(a) Circumstances indicating that the registrant has acquired the domain name primarily to -

(i) sell, rent or otherwise transfer the domain name to a complainant or to a competitor of the complainant, or any third party, for valuable consideration in excess of the registrant's reasonable out-of-pocket expenses directly associated with acquiring or using the domain name;
(ii) block intentionally the registration of a name or mark in which the complainant has rights;
(iii) disrupt unfairly the business of the complainant; or
(iv) prevent the complainant from exercising his, her or its rights;

(b) circumstances indicating that the registrant is using, or has registered, the domain name in a way that leads people or businesses to believe that the domain name is registered to, operated or authorised by, or otherwise connected with the complainant;

(c) evidence, in combination with other circumstances indicating that the domain name in dispute is an abusive registration, that the registrant is engaged in a pattern of making abusive registrations;

(d) false or incomplete contact details provided by the registrant in the whois database; or

(e) the circumstance that the domain name was registered as a result of a relationship between the complainant and the registrant, and the complainant has been using the domain name registration exclusively; and paid for the registration or renewal of the domain name registration.
Reg 4: Evidence of Abusive Registration

(2) An offensive registration may be indicated if the domain name advocates hatred that is based on race, ethnicity, gender or religion and/or that constitutes incitement to cause harm.

(3) There shall be a rebuttable presumption of abusive registration if the complainant proves that the registrant has been found to have made an abusive registration in three or more disputes in the 12 months before the dispute was filed.
Reg 5. Defences:

(a) before being aware of the complainant's cause for complaint, the registrant has -
(i) used or made demonstrable preparations to use the domain name in connection with a good faith offering of goods or services;
(ii) been commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name; or
(iii) made legitimate non-commercial or fair use of the domain name;

(b) the domain name is used generically or in a descriptive manner and the registrant is making fair use of it;

(c) that the registrant has demonstrated fair use, which use may include web sites operated solely in tribute to or fair criticism of a person or business: Provided that the burden of proof shifts to the registrant to show that the domain name is not an abusive registration if the domain name (not including the first and second level suffixes) is identical to the mark in which the complainant asserts rights, without any addition; and

(d) in order to succeed in terms of regulation 4(3), the registrant must rebut the presumption by proving that the registration of the domain name is not an abusive registration.
NB: Broad Definition of

"RIGHTS"

which includes:

"property rights, commercial, cultural, linguistic, religious and personal rights protected under South African law, but is not limited thereto

PROCEDURE

Quick, Simple and Effective

Formal and Substantive Requirements set out in Regs

Costs relatively low

All Precedents reported online

DECISIONS

Show TM Reasoning being applied

• Common Law Rights (Mr Plastic. FIFA)
PO valid ground for complaint
• Registered Rights (The Phone Book )
Logo with disclaimer – refused protection
• Confusing Similarity - (Mweb/ Mwebsearch)
Addition of descriptive word to TM – still confusingly similar
• Dilution (Standard Bank type-squatting)
Registration in bad faith/ Unfair advantage and dilution of mark
• No intention to use/ blocking reg (Telkom/ Cool Ideas)
• Well-known Marks (Citroen)
Fan-siten not allowed, even though Citroen not trading in SA

ANYTHING GOES...
.CAPETOWN
.TRAIL
.ASIAN
.FOOD
.BRAND
.BOKKE
.MUSIC
.ECO
.BUY
.TRADE
.CHARITY
.JOBSEARCH
No clear benefit
BUT: Difficult and hard to Register
CONCLUSION?
We wait and see....
Full transcript