Good news for brand owners is the recent finding that domain name parking can, in certain circumstances, be construed as an abusive registration.Darren Olivier is a partner & Stephanie Jearey is a candidate attorney in the IP Department at Bowman Gilfillan
In Mxit Lifestyle (Pty) Ltd v Andre Steyn (ZA2008-0020), the alternative dispute resolution body for South African domain names found to this effect for the first time.
The adjudicator also confirmed that the relevant date for showing such rights to a name or mark was the date of the complaint and not the registration date of the disputed domain name.
The Regulations for domain name dispute proceedings require the complainant to prove that in order for a domain name to be transferred:
a) The complainant has established rights to a name or mark which is identical or similar to the disputed domain name; and
b) In the hands of the Registrant, the disputed domain name is an abusive registration.
The complainant, Mxit Lifestyle, lodged a dispute against an individual registrant’s (Mr Andre Steyn) domain name mixit.co.za.
Mxit operates a social networking and communication service claiming 8,7 million users based on text messages aimed at the youth market. Mxit is the proprietor of several pending trade mark applications in South Africa. Although he domain names mxit.co.za and mxit.com were registered on 9 May and 26 February 2004 respectively, the complainant only began to use its MXIT trademark in May 2005.
The adjudicator held that the complainant could not claim trade mark rights (in the sense of an actionable right against third parties) in its pending trade mark applications, company name or domain name per se.
However, the uncontested evidence of use of the trade mark between May 2005 and March 2008 was sufficient to establish common law rights in the trade mark MXIT, which was held to be neither a descriptive nor a generic term. Further, the relevant date for showing such rights was the date of the complaint and not the registration date of the disputed domain name.
The adjudicator further confirmed that the contested domain name MIXIT.co.za was similar to the complainant’s trade mark MXIT.
Was the contested domain name an abusive registration?
The adjudicator found that disputed domain name was used or had been registered in a way that led people or businesses to believe that it had been registered to, operated or authorised by or otherwise connect with the complainant.
The adjudicator held that “people will, particularly in view of the similarity between the disputed domain name and the complainant’s trade mark MXIT and the fact that the complainant’s trade mark is pronounced and often referred to in writing as ‘Mixit’, likely believe that the disputed domain name is connected with the complainant”.
The case is good news for brand owners; but does it go too far?
Although the factors for what may constitute an abusive domain name in domain name parking situations are usefully set out in the decision, one interpretation of the ruling is that it was primarily the similarity of the trade mark and domain that was sufficient to consider the domain name an abusive registration.
It is not clear if and to what extent those factors – for example, whether the domain name is an obvious trade mark or whether the landing page provides links or advertisements for competing products – were considered in making the finding that “… the registrant generates revenue from the sponsored links and advertisements that appear on the landing pages and as a consequence of the confusion with complainant’s trade mark.”
This is particularly so because initial conduct of the registrant in using the keywords “chat”, “messaging” and “Mixit” had ceased and their relevance apparently discarded by the adjudicator, leaving us with a situation where a parked domain name using ordinary terms for search engine optimisation – for example, fashion, clothing, music – that are unrelated to the complainant’s rights give way to finding that the domain name is abusive.
Darren Olivier is a Partner at Bowman Gilfillan and Stephanie Jearey is a candidate attorney