Domain names and intellectual property

There is often confusion when it comes to registering domains names and intellectual property. The reason for this is simple – when a company needs to decide on a domain name, it generally chooses one of its own trade marks. However, it might be that someone else has already registered a domain name that is similar, or the same, as a company’s trade mark.

As a result, the issues that surface in trade mark disputes often crop up in domain name disputes too. However, the court has already recognised that trade mark principles are applicable in domain name disputes.

Who handles domain name disputes?

When domain names first appeared on the scene, disputes as to who was entitled to the registration of a particular name were handled by the courts, usually by way of trade mark infringement or passing-off proceedings.

1. But now there are Alternative Dispute Resolution (ADR) procedures that relate to the various domain names.
2. So, for example, disputes regarding ‘.co.za’ domain names are handled by way of the ADR procedure that was established by the Regulations passed under the Electronic Communications and Transactions Act (ECT Act) 25 of 2002.

When does a domain name have trade mark infringement?

An example of a case which deals with the issue of domain name registrations and trade mark includes kingo.co.za and kingonumbers.co.za.

1. It was found that, even though the registrant had got in first with a domain name registration (kingonumbers), the complainant, Kingo, had stronger rights to the trade mark Kingo through use, and Kingonumbers would be seen as a natural extension of Kingo.
2. The review court used this quote from the panel’s decision: The crux of this decision is who owns “Kingo”? It is settled law that the person who has appropriated a mark for use in respect of goods or services as a trade mark, may claim to be the proprietor.When it comes to domain names, if a name has been trade marked by someone else, then you shouldn’t try using it. It would be like registering a domain name such as nikeshoes.co.za – You would be treading on thin ice. However, if your chosen domain name has not been trade marked, then it shouldn’t be a problem, even if another company would seem to benefit from your registered domain name. For instance, registering a domain name such as greatshoes.co.za would not be a trade mark violation if “great shoes” has not be trade marked. If another shoe company wanted to use that domain name, they would have to buy it from you or find another.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Please feel free to contact Brian Kahn for further information or specific and detailed advice. Errors and omissions excepted (E&OE)