In a recent decision by the South African Institute of Intellectual Property Law (SAIIPL), the domain name <absapremiership.co.za> (domain name) was transferred to ABSA Bank Limited (ABSA). ABSA is the registered holder of the trade mark “ABSA” and has also applied for the registration of the trade mark “ABSA PREMIERSHIP” during March 2008. The SAIIPL found the registration to be an abusive registration in terms of the Alternative Dispute Resolution Regulations (the Regulations).
This case confirms the rights in registered trade marks and unregistered common law rights in the context of domain names.
ABSA contended the following
Common law and statutory rights:
ABSA has common law and statutory rights (“well known trade mark” in terms of section 35 of the Trade Marks Act 194 of 1993) in the “ABSA” mark. ABSA is the principal sponsor of the SA Premier Soccer League Competition and the league’s premier competition became known as the ABSA PREMIERSHIP. Accordingly ABSA has also acquired strong common law rights in the trade mark “ABSA PREMIERSHIP”. Once registered, ABSA will also have statutory rights in the name, back dated to March 2008 – which is prior to the registration of the domain name.
Identical to trade mark:
The domain name incorporates the ABSA trade mark and is identical to the ABSA PREMIERSHIP trade mark.
The public will associate the domain name and any associated web site it points to in future with ABSA. This confusion will cause ABSA harm, because of ABSA’s reputation and goodwill in the ABSA PREMIERSHIP mark.
The Registrant was aware of ABSA’s rights in the mark.
The SAIIPL found
- ABSA has rights in the ABSA PREMIERSHIP mark;
- The Registrant was well aware of ABSA’s rights in the mark;
- The Registrant could not trade legitimately under the ABSA PREMIERSHIP name, because it would[at least] be deceptive;
- The <absapremiership.co.za>web site is dormant;
- The Registrant obtained registration for motives which, in the Adjudicator’s view, fall within Regulation 4(1)(a) to indicate an abusive registration.
Factors listed in Regulation 4(1)(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 complainant has rights;
(iii) disrupt unfairly the business of the complainant; or
(iv) prevent the complainant from exercising his, her or its rights.
Your registered trade marks and unregistered common law marks are worthy of protection. If a third party has registered your mark as a domain name, it may very well constitute an abusive registration in terms of the Regulations.