Friday, September 2, 2011

DomainDisputes.co.za: South African Domains Alternative Dispute Resolution

I don't know whether there is any other African country with such an advanced Alternative Dispute Resolution procedures as the .CO.ZA domains namespace. South Africa's ADR is provided by South African Institute of Intellectual Property Law(SAIIPL) which was established to help combat rights abuses in the .za namespace in 2007 after the organization applied to South Africa's Communications department with the intent of offering its expertise in domain name disputes in South Africa.

DomainDisputes.co.za hosts SAIIPL's disputes cases and other resources and general information on how to file domain name disputes in the .co.za namespace. There are extensive resources and cases to draw from and what this means is that cybersdquatters are having a hellish time down South. The DomainDisputes.co.za is an exemplary case that can easily be imitiated by other African countries in order to set up their own ADR procedures. South Africans could help them in this regard in helping combat cybersquatting in Africa. African ccTLDs need to build trust in the namespaces and an effective ADR procedure to combat various right abuses will go a long way in ensuring that brands can entrust their domain names in these African namespaces.

The fees are however quite steep, costing a minimum of $10,000 for an Adjudicator to decide on your dispute, so not every company will spend that much in acquiring its domain back.

Several prominent South African domainers have been on the wrong side of DomainDispoutes.co.za effective ADR procedures. An interesting case that caught my attention most was one concerning the domain movingforward.co.za . As many in Africa are now familiar, Standard Bank has been Moving Forward for the last two years connecting Africa to the rest of the world. The case of movingforward.co.za pitted Standard Bank against "Digital Orange" an alter ego of Joris Kroner. The Domain was registered on 22 July 2010 with Joris Kroner as an admin contact.

Standard Bank had launched the payoff line "Moving Forward" in 2009 internally to its employees followed by a global broadcast on the major international media and in 30 countries. It's important to note that Toyota also uses the pay off line "Moving Forward" and in fact the domain movingforward.com redirects to Toyota Website while MovingForward.co redirects to Standard Bank's website. Standard Bank used a total of approx R6 million in marketing the Moving Forward pay off line to create a global awareness of the brand. In Intellectual Property law, "Moving Forward" is called Standard Bank's ommon law trademark; but then Joris Kroner promptly grabbed the domain before Standard Bank could lay their hands on it in June 2009(which was very lousy on Standard Bank's side anyway)

In the time honoured fashion, Joris contacted Standard Bank with following email after a month:

“We are the domain holder of the domain movingforward.co.za. We have been approached by a commercial party to sell this domain. Please let me know if Standard Bank is interested as we will otherwise proceed with the sale of this domain.”

When Standard Bank insisted that it had the right to the domain name, Joris replied:

“Registering domain names is done on a “first come first served basis”. Moving forward is a generic English term which as such has no connection with Standard Bank…. However I would consider selling the domain to Standard Bank”.

After some months, Joris dispatched another email to the bank:
“Should you not be interested in acquiring this domain, please let me know before Friday 13th November. After that we will move forward with selling the domain to other interested parties.”

Some things worked to Joris' disadvantage:
  • The domain name had never been used since it was acquired by Joris
  • Standard Bank was deemed to have done extensive marketing on "Moving Forward" pay off and Joris registered the domain 5 days after the "Moving Forward" marketing campaign began, which he attributed to "pure coincidence"
  • He offered to sell the domain to Standard Bank a month after acquiring it indicating he was aware of Standard Bank's existing rights in the "Moving Forward" common law trademark.
  • Joris was also found to have made several other abusive registrations including hackett.co.za  absapremiership.co.za  ketelone.co.za peroni.co.za hotelmissoni.co.za

Joris Kroner offered the following arguments in his defence:
  • Moving Forward is a generic English term and not a brand or registered trademark, hence available for registration as a domain name.
  • The time of registration of movingforward.co.za was purely coincidental.
  • At the time of registration, Moving Forward was not widely associated with a Standard Bank but was a global pay off line for Toyota.
  • Registering a domain name and not putting it to use immediately is not abusive according to Uniforum's(COZA) terms.

The domain was transferred to Standard Bank. Of course it's clear that Joris was engaging in abusive registrations, taking into account the five other domains he registered thereafter. In common parlance, he was a cybersquatter. If you are an intellectual property attorney and supposing Joris had not engaged in other abusive domain registrations, what decision would you have arrived at?