Domain Names and how to Protect them

Domain Names and how to protect them

by Reinhardt Buys

1. What is a domain name?

A domain name is a unique Internet address that identifies a web site, for example www.kalahari.net or www.naspers.com. Domain names are registered by private companies in different countries.

There are ten general top level domains, namely:
* .com - for commercial activities;
* .net - for networks;
* .org - for non-profit organisations;
* .earo - for the air-transport industry;
* .biz - for businesses;
* .coop - for co-operatives;
* .info - for information databases like encyclopaedias and online libraries;
* .museum - for museums;
* .pro - for professionals like attorneys and doctors;
* .name - for personal names e.g. nelson.mandela.name;

Other popular general top level domains are .tv and .ws. These top levels where initially country level domains for the islands Tavalu and West-Samoa, but because of the similarity to the abbreviations tv (television) and ws (web site) this domains are available for international registration. Every country (apart from the USA) has its own top level country domain, for example South Africa is .za and Britain is .uk. Furthermore there are many domain name possibilities under every top level country domain.

In South Africa there are the following:
* .ac.za - for academic institutions;
* .alt.co - no definition yet;
* .bourse.za - for companies listed in the JSE;
* .city.za - for local authorities;
* .co.za - for commercial activities;
* .edu.za - for distance learning organisations;
* .gov.za - for government departments;
* .law.za - for the legal profession;
* .mil.za - for military establishment
* .net.za - for the ports on networks of Internet service providers;
* .ngo.za - for non-governmental organisations;
* .nom.za - for individuals and persons;
* .org.za - for non-commercial activities;
* .school.za - for schools;
* .tm.za - for the owners of registered trademarks;
* .web.za - for individuals who require namespace only and for web servers.

There are many differences between domain names and trademarks, for example:

* Any word, abbreviation or mixture of letters and numbers could be registered as a domain name, while only words, logo's or phrases that are distinctive could be registered as trademarks;

* There can only be one top level domain registration in every top level domain (e.g. Naspers.com, Naspers.org and Naspers.net), while there can be as much as 42 different trademark registrations of the same name in every country;

* Domain registrations are handled by private organisations who obtained their authority from ICANN while trademarks are registered by government departments who obtained their authority to do so through territorial statutes;

* There is no legislation in South Africa yet that deals with the registration of domain names and the resolution of domain name disputes, while the law of trademarks could be found in the Trade Marks Act and the common law

* Domain names have international application while trademarks are registered territorially

2. How is a domain name registered?

Through agreements ICANN authorised different private organisations as registrars to operate domain name registrations. The company that handles the .co.za domain in South Africa is Uniform, visit their web site at http://co.za. For a list of the registrars that handle other .za domain registrations see http://www2.frd.ac.za/uninet/zadomains.html. For a list of other general top level domain registrars visit http://www.icann.org/registrars/accredited-list.html. For a list of the various country code registrars visit http://www.iana.org/cctld/cctld-whois.htm.

The first step in any domain name registration is to ascertain whether the specific domain is available for registration or not, by conducting a domain name search:

* To conduct a domain name search in the .co.za domain, visit http://co.za/whois.shtml

* To conduct other domain name searches visit www.register.com or the home pages of the registrars mentioned above.

The second step in the registration process is to submit the necessary details to the registrar in question and pay the registration fees. Domain name registration is done on a first-come-first-serve basis and the registrars do not check for possible trademark or copyright infringements.

3. How is a domain name mis-used?

There are many instances of domain name use that can lead to a domain name dispute, examples 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 misspell a well know domain name and registers it in his/her name to attract web users that might misspell the domain name of a popular brand;

* 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 relying on bad faith use of such a name in the proceedings.

4. Domain name disputes

Depending on the nature of the domain name dispute and the level it is registered in, it can be handled in basically two ways:

* Litigation in terms of the Trademarks Act or a common-law wrong such as passing off (for .co.za disputes);

* Domain name dispute resolution proceedings through ICANN and those bodies authorised by ICANN to handle these proceedings (for .com, .org. net and some country level domain disputes).

* A list of ICANN dispute resolution bodies could be found at http://www.icann.org/udrp/approved-providers.htm

* The ICANN domain name dispute resolution rules could be found at http://www.icann.org/udrp/udrp-policy-24oct99.htm

* A list of current proceedings and domain name dispute judgements could be found at http://www.icann.org/udrp/udrp.htm

* To succeed with a domain name claim through the ICANN / WIPO domain name arbitration proceedings a claimant must be able to prove the following:

a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

b) that the registrant has no rights or legitimate interest in the domain name; and

c) that the domain name has been registered in bad faith.

* A domain name registrant will have no rights or legitimate claim to a domain name if:

a) the registrant has not used the domain name in connection with a bona fide offer of goods or services; or

b) the registrant is not commonly know by the domain name; or

c) the registrant is not making a legitimate non-commercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or tarnish the complainant's mark.

* The following actions by a domain name registrant will be evidence of a bad faith registration:

a) registering a domain name primarily for the purpose of selling it; or

b) registering a domain name primarily for the purpose of preventing the trademark owner from getting it; or

c) registering a domain name primarily for the purpose of disrupting a competitor's business.

5. Domain names general.

The fact that a business or individual registered a company or closed corporation name does not give that business or individual any rights in the domain of the same name, unless the name has been used in such a way and for such time that it attracts common law trademark protection. The fact that a business or individual registered a trademark does not give that business or individual any rights to a domain name if another trademark owner registered that domain name before. Businesses should be very careful not to state that their domain names might be for sale, even at inflated prices, as it may lead to reverse domain name highjacking or trigger a ICANN/WIPO domain name dispute proceeding.

Reinhardt Buys is a partner at Buys Incorporated, a law firm specialising in internet, media and intellectual property law. Click here to visit their site.

Back to www.bizland.co.za

*	Any word, abbreviation or mixture of letters and numbers could be registered as a domain name, while only words, logo's or phrases that are distinctive could be registered as trademarks;
*	There can only be one top level domain registration in every top level domain (e.g. Naspers.com, Naspers.org and Naspers.net), while there can be as much as 42 different trademark registrations of the same name in every country;
*	Domain registrations are handled by private organisations who obtained their authority from ICANN while trademarks are registered by government departments who obtained their authority to do so through territorial statutes;
*	There is no legislation in South Africa yet that deals with the registration of domain names and the resolution of domain name disputes, while the law of trademarks could be found in the Trade Marks Act and the common law
*	Domain names have international application while trademarks are registered territorially

*	To conduct a domain name search in the .co.za domain, visit http://co.za/whois.shtml
*	To conduct other domain name searches visit www.register.com or the home pages of the registrars mentioned above.

*	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 misspell a well know domain name and registers it in his/her name to attract web users that might misspell the domain name of a popular brand;
*	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 relying on bad faith use of such a name in the proceedings.