Telkom Media first to win domain name dispute

Telkom became the first company to win a domain name dispute in terms of the new arbitration procedure that governs local domain name disputes.

In a decision published by the South African Institute of Intellectual Property Law (SAIIPL) on Friday afternoon, adjudicator Andre van der Merwe ordered that the domain name telkommedia.co.za be transferred to Telkom.

SAIIPL is one of two institutions that administer domain name disputes in terms of the ZA Alternate Dispute Resolution Regulations that was published in November 2006 by the Department of Communications.

Although this case is the second to be decided in terms of the Regulations, it is the first case in which the transfer of a domain name was ordered.

The case resulted from the registration of the telkommedia.co.za domain name by Cool Ideas in September 2006, shortly after Telkom Media publicly announced its vision to set up a subscription television service.

Telkom instructed Buys Inc. Attorneys to lodge a complaint with SAIIPL after Cool Ideas refused to transfer the domain name.

According to the decision, Telkom succeeded to show that it had rights in the name Telkom that is similar to the domain name and that the registration of the domain name by Cool Ideas was an abusive registration.

In his decision, adjudicator Andre van der Merwe of D M Kisch Attorneys found that Cool Ideas registered the domain name to intentionally block Telkom from registering the name and primarily to disrupt the business of Telkom and its subsidiary Telkom Media.

Procedural objections by Cool Ideas as to the locus standi of Telkom and the procedure followed to obtain the domain name were dismissed.

According to Reinhardt Buys of Buys Inc. the decision laid down important rules and precedents for future domain name disputes.

“The adjudicators decision is well considered, well drafted and in line with current international precedents” says Buys.

“Compared to court proceedings, online arbitration of domain name disputes is much faster and affordable. If this matter was decided by the courts the parties would have incurred legal fees in excess of R500 000.00, whereas online arbitration only carries a R10 000.00 administrative fee”.

Telkom’s complaint and the decision may be downloaded from the Buys Inc. website.

In June 2007 Buys Inc. also lodged a complaint on behalf of Telkom regarding the telkombusiness.co.za domain name. This matter is currently pending.

In August 2004 and before the existence of online domain name dispute resolution in South Africa, Telkom unsuccessfully tried to prevent the use and registration of helkom.co.za and telkomsucks.co.za.

“Critical websites that operate from a domain name that include the name of a trademark holder and a negative connotation like ‘sucks’ are not damned by the new online arbitration Regulations”, explains Buys.

“However, the site must be used for fair criticism and not merely to sell it to the trademarks holder”.

The Regulations specifically protect so-called critical sites and domain names that link famous company names to negative connotations.

Regulation 5(d) expressly states that fair use of a domain name “include web sites operated solely in tribute to or fair criticism of a person or business”.

In 2002 South African Airways also failed to prevent the use of neverflysaa.com because the site was used for reasonable criticism and related opinions of SAA.

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