People often contact us saying they want a specific <.za> domain name. We have set out what we consider to be the best approach in these matters (based on our previous experience) in an article entitled I want that domain name. Please read that article before reading this article.
So, if you want an opinion from us regarding a <.za> domain name, then we require the information requested in this article. We know it is a lot and can be time consuming, but it is worth it in the long run.
Usually, the basis of the argument is that it is an abusive registration.
“abusive registration” means a domain name which either-
(a) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; or
(b) has been used in a manner that takes unfair advantage of, or is unfairly detrimental to the complainant’s rights”
Obviously the domain name – we will find out all the details on its registration.
Any correspondence between you and the registrant.
Do you have rights in respect of a name or mark which is identical or similar to the domain name? This is usually quite easy to answer. For example, have you registered any trade marks? If yes, we need details about those registrations. When and what classes? If you don;t know this information don;t worry – we can find it out for you. “”Rights” and “registered rights” include intellectual property rights, commercial, cultural, linguistic, religious and personal rights protected under South African law, but is not limited thereto”. This is very wide as you can see.
Is there any evidence that the domain name, in the hands of the registrant, is an abusive registration? You need to prove this on a balance of probabilities, so you need to have proof. Do you have proof (preferably written) that are of the following factors (specified in Regulation 4(1)) exist?
“(a) Circumstances indicating that the registrant has registered or otherwise 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 –
(i) been using the domain name registration exclusively; and
(ii) paid for the registration or renewal of the domain name registration.”
Hard evidence people, is what you need!
Do you think that the registrant will be able to prove that any of the following factors (specified in Regulation 5) exist?
“(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…”