Domain Name Disputes: Does the Tribunal have jurisdiction over domain names?
The digital age has made it essential for companies all over the world to establish a strong online presence. Whether through a website, online store, blog, social media page or a combination of all four, getting your company online reaps major benefits in terms of reaching potential customers and marketing. Even if your company does not conduct business online, customers and potential customers are expecting to see you online. According to Google, 97% of consumers use the web to search for local businesses. As companies establish themselves online, a new form of name disputes emerges i.e. domain name disputes. The Companies Act no. 71 of 2008 (the Act) is silent on company name disputes in relation to domain names which poses a question whether the Companies Tribunal (the Tribunal) which is established by the same Act does have jurisdiction over company domain name disputes if such domains are companies or not? Can the Tribunal provide recourse mechanism for these kinds of disputes?
Tech Terms Computer Dictionary provides simplifies the definition of a domain name as a unique name that identifies a website. For example, the domain name for the Tribunal is companiestribunal.org.za. Each website or any other online platform has a domain name that serves as an address which is used to access it. Whenever you visit a website, the domain name appears in the address bar of the web browser. All domain names have a domain suffix, such as .com, .net, or .org. The domain suffix helps identify the type of website the domain name represents. For example, “.com” domain names are typically used by commercial website, while “.org” websites are often used by non-profit organizations and “.ac” are used by academic institutions etc.
In South Africa the .za Domain Name Authority (.ZADNA) manages and regulates the “.za” namespace and it is accountable to the South African Department of Telecommunications and Postal Services. According to .ZADNA there’s over 1.2 million registered domains in the country which makes it the highest in Africa followed by Nigeria with over one hundred thousand registered domains. As more South Africans become entrepreneurs, it is not surprising that the issue of company names is highly contested. Everyone wants the right name for their business because the name of a company reflects its brand or corporate identity. It is therefore understandable that companies would seek to protect their names.
Name dispute application in general constitutes the highest in terms of application filed with the Tribunal year on year. In 2017/18 financial year for instance, 70% of applications filed relate to name disputes. Section 11(2) (a) of the Act states, that the name of a company must not be the same as the name of another company, close corporation or co-operative. However, the Tribunal has never received a company domain name dispute application specifically. The only application which came close was Google LLC vs Google Maps Ads (Pty) Ltd and CIPC. The Applicant (Google LLC) filed an application in terms of Section 160 against Google Maps Ads (Pty) Ltd to be ordered to change its name to one which does not incorporate and is not confusingly and or/deceptively similar to the Applicant’s “Google” trademark. The Applicant does provide online map navigation services and is entitled to use its marks as Google Maps and Google Ads and has made extensive use of its trademark in this manner.
Upon evaluation of the merits of the case, the Tribunal found that the Applicant has shown an interest in the matter and has subsequently shown good cause. It also found that by merely looking at or hearing the two names simultaneously or consecutively; and when the two names are to be used in the normal and fair manner in the course of business, the name Google Maps Ads (Pty) Ltd of the First Respondent’s company is confusingly similar to the Applicant’s name in terms of section 11 (2)(b)(i) and in terms of Section 11 (2)(c)(i) it will falsely imply, suggest or reasonable mislead a person to believe incorrectly that Google Maps Ads (Pty) Ltd the First Respondent is part of, or associated with the Google LLC Applicant that is not the case. The Tribunal ordered Google Maps Ads the First Respondent to choose a new name which does not incorporate the Applicant’s registered trademark/s, or anything that can be considered to be confusingly similar thereto and to amend its Memorandum of Incorporation accordingly.
So, what happens if a third party registers a domain name that incorporates your trademark where do you file a complaint? There are legal mechanisms or regulatory bodies established to assist in resolving domain name disputes in general like the South African Institute for Intellectual Property Law (SAIIPL) or the Court. It is common practice for a company to register its company/trademark as a domain name for the public to easily identify the website and relate the name with the brand. As Janine Popick who is the co-founder of Dasheroo former CEO of VerticalResponse argues that a company name with a non-matching domain name may spell disaster for your business.
Although the Companies Act is not specific about domain name disputes, some may assume that the Tribunal does have inherent jurisdiction if those disputes fall within the ambit of the Act i.e. related to company domain names.
The Tribunal adjudicates name disputes based on the procedure and merits of the case. In filing for a name dispute, the Applicant must serve the Respondent within 5 business days and provide the confirmation that the Respondent has been notified of the application. The Tribunal will make a determination if indeed the name in dispute is confusingly or deceptively similar to that of the Applicant. However, it must be pointed out that the mere fact that the name of one company is similar to the other, does not on that ground alone, justify a conclusion that there will be a likelihood of confusion even when the companies are trading in the common field of activity. For the names to be regarded as confusing similar, it must be shown that a side-by-side use of the two company names will result in deception and/or confusion. This means therefore that mere similarity is not sufficient there must be a comparison of the two competing trade names for confusing similarity. The Tribunal has delivered decisions in relation to this.
We can conclude that the Tribunal does not have jurisdiction to adjudicate or mediate on matters relating to company domain disputes, it is not empowered to do so in terms of the Act, so it cannot order a party to cancel a domain name. However, Section 160 (3)(1) does state that any other person with an interest in the name of company may apply to the Tribunal for a determination whether the name, or reservation, registration or use of the name, or the transfer of any such reservation or registration of a name, satisfies the requirement of the Act.
It will be interesting to see how the issue of domain names will be addressed during the Seminar in February 2020.
* photo: newcoupon.net