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MAKE SURE YOUR IP DOES NOT SLIP THROUGH THE NET - WARREN WEERTMAN

The Internet is a blessing to owners of intellectual property rights. It represents a fantastic medium by which new and existing customers can be reached, as well as relatively inexpensive medium to promote your goods and services. The Internet also represents a curse to owners of intellectual property rights. Not only can information be disseminated at the click of a mouse button (which could result in your patented information becoming public knowledge or your copyrighted material being disseminated without your consent), but third parties regularly make use of the domain name system as a means of infringing the rights of trade mark owners through a practice known as “cybersquatting”. Typically cybersquatters register domain names incorporating well-known trade marks and then attempt to resell the domain names to the trade mark proprietor for an exorbitant sum of money.

How do you protect your domain names? The first step is to adopt a proactive stance towards domain name registrations and ensure that you have registered domain names which not only incorporate your trading names, but also your trade marks. Once you have registered your domain names you need to ensure that the domain names are renewed every year since failure to pay the annual renewal fee can result in your domain names being deleted.

What if someone is cybersquatting on a domain name which incorporates one of your trade marks? At present the only way to resolve such disputes is to either negotiate a favourable settlement with the cybersquatter, alternatively to take the cybersquatter to Court and enforce your rights by means of a Court order. In future, trade mark proprietors will be able to make use of the .ZA Domain Name Dispute Resolution Regulations (or ZADRR) to resolve their domain name disputes.

The ZADRR is similar to the Uniform Domain-Name Dispute Resolution Policy (or UDRP) which is the domain name dispute resolution mechanism for .COM domain names, the ZADRR goes further than the UDRP in that it allows for any person whose rights have been infringed by a domain name registration to take steps to stop the infringement.

The ZADRR works as follows: a potential complainant will need to file a complaint with an accredited dispute resolution provider. The provider will then notify the domain name registrant of the complaint and afford the registrant an opportunity to respond to the complaint. Once the dispute resolution provider has received the complaint and the response, these documents will be forwarded to an adjudicator to decide the complaint. It is important to note that if the domain name registrant does not file a response the complaint will still proceed and the adjudicator will make a decision based only on the complaint. This is similar to the concept of default judgment in our Courts. However, just because the domain name registrant does not file a response does not mean that decision will go the way of the complainant (as many a UDRP complainant has found). It will be some time still before the ZADRR comes into force. We anticipate though that the ZADRR should prove to be a relatively quick and inexpensive means of protecting your trade marks where they have been registered as domain names.

Section 77 of the Electronic Communications and Transactions (ECT) Act 25 of 2002 makes provision for “Take Down Notices”. You can use a Take Down Notice to enforce your rights of copyright (for example) against website proprietors that are infringing your rights and have access to the website or webpages disabled. For example, if you find that a website is making copies of a book that you have published available for download to the general public, you could issue a Take Down Notice and have access to the webpage, on which the download is available, disabled to ensure that no further copies can be distributed. Any Take Down Notice must be addressed to the person or entity hosting the website and not the website proprietor itself.

Whilst Section 77 of the ECT Act has been around since 2002 in many cases Internet Service Providers are unfamiliar with the provisions of Section 77 and often do not know what to do with a Take Down Notice when they receive it. Whilst it is not necessary to consult an attorney to have a Take Down Notice drafted, it is a good idea to consult an attorney familiar with the provisions of Section 77 to ensure that your rights can be enforced as quickly as possible.

Whilst the Internet may pose challenges, it is clear that proprietors of intellectual property rights do have legal recourse to stop the infringement of their rights on the Internet. The key though lies in adopting a proactive stance to protect your rights on the Internet and use the laws available to you, when necessary.

Warren Weertman

Friday, March 31, 2006