The Role TradeMarks Play in Domain Name Disputes

Is a trademark registration important in a domain name dispute?

Whilst not the only factor to be taken into account, a trademark registration is nonetheless the most powerful single factor for succeeding in a dispute involving a domain name which incorporates the trademark.

For this reason, the registration of a trademark in addition to the registration of your domain name is of paramount importance.

Here’s why:

What is a domain?

A domain name is a unique internet address that identifies a website, for example www.brandarmour.co.za Domain names are registered by private companies in different countries. Most countries have their own country domain suffixes, for example .za for South Africa. For the purposes of this article, we will deal with domain names registered in South Africa.

The difference between a trademark and a domain

The essential difference between a domain name and a trademark is that any word, abbreviation or mixture of letters and numbers can be registered as a domain name, while only words, logos or phrases which are distinctive or capable of becoming distinctive through use can be registered as trademarks.

Trademarks not presently relevant when registering a domain

To reach another person on the Internet you have to type an address into your computer – a name or a number. That address has to be unique so computers know where to find each other. ICANN (Internet Corporation for Assigned Names and Numbers) coordinates these unique identifiers across the world. Without that coordination, we wouldn’t have one global Internet.

When registering a domain name, the first step is to ascertain whether that specific domain name is available for registration or not by conducting a domain name search on the relevant registration website.

Domain name registrations are done on a first come first served basis and the registrars of domain names do not check for possible trademark or copyright infringements. This is because trademarks are registered by a government department, namely the national trademarks registry, which is authorized by statute, whilst domain names are registered by private organizations who obtain their authority from ICANN.

Misuse of a domain name

A domain name might be misused in a manner which may lead to a domain name dispute.

Examples of domain name disputes include:

Cybersquatting – if a person registers a domain name without having any rights thereto, in bad faith, in order to sell it to the rightful trademark owner;
Typosquatting – if a person misspells a well known domain name and registers it in his/her name and attract web users that might misspell the domain name of a popular brand; and
Reverse domain name hijacking – if a person tries to take a domain name away from the rightful owner through an ICANN arbitration process, after the rightful owner agreed to sell the name and then relies on bad faith use of such name in the proceedings.

Resolution of domain name disputes

A domain name .za dispute can be resolved via basically two routes:

Through litigation in terms of trademark infringement under the Trade Marks Act, 1993. Obviously, a trade mark registration is of paramount importance in the litigation.
Through authorized dispute resolution bodies. These bodies might be authorized by, for example, ICANN or by local legislation such as the Electronic Communications and Transactions Act, 2002 to handle such proceedings. They will have regard to any trade mark rights of the complainant.

For hearings before such authorized dispute resolution bodies, a complainant must generally be able to prove the following:

The domain name is identical or confusing the similar term to a trademark owned by the complainant (obviously, once again trademark registration is of paramount importance); and
If the registrant of the domain name has no rights or legitimate interest in the domain name (for example, the registrant is not commonly known by the domain name, or the domain name is not used in connection with a bona fide offer or the registrant is misleadingly diverting consumers to itself or tarnishing the complainant’s trademark. A trademark registration is paramount in this example); and
That the domain name has been registered in bad faith (i.e. primarily for the purpose of selling it, or primarily for the purpose of preventing the owner of a trademark from registering it; or primarily for the purpose of disrupting a competitor’s business. Once again, a trade mark registration is paramount).

So, is registration of a trademark important in domain name disputes?

Whilst not the only factor to be taken into account, a trade mark registration is nonetheless the most powerful single factor for succeeding in a dispute involving a domain name which incorporates the trademark.