Cyberbusters versus Cybersquatters: Round II in the ZADNA Ring
| Jurisdiction | South Africa |
| Author | Tana Pistorius |
| Date | 25 May 2019 |
| Pages | 661-679 |
| Published date | 25 May 2019 |
Cyberbusters versus Cybersquatters: Round II in
the ZADNA Ring
TANA PISTORIUS*
University of South Africa
1 Introduction
The South African domain name dispute resolution procedure has proved to
be effective. Two panels have effectively addressed abusive domain name
registrations. One puzzling trend is the prevalence of techno-jacking in the
South African abusive registration arena. A searchable database of national
decisions will raise the level of consistency of adjudications and promote
legal certainty. A review of the second round of .za adjudications also shows
that the time is ripe for a review of the relevant regulations.
2 Domain Names
2.1 What Is a Domain Name?
The Domain Name System (DNS) comprises a database known as the root
zone that is spread over thirteen root servers.
1
The DNS maps Internet
Protocol (IP) addresses to equivalent domain names. This process is termed
‘name resolution’.
2
Computers communicating through global information
networks (such as the Internet) can exchange information because each
connected computer has a unique numerical IP address. Each IP address
consists of four sets of numbers (integers), separated by periods (or ‘dots’).
Each digit can have a value from 0 to 255.
The technical function of a domain name is to reflect a human-friendly
address for a web site’s IP address. The DNS maps each domain name to an IP
addresses, making it possible to map ‘new-cars.co.za’ to ‘431.401.773’. The
practical function of a domain name is to act as an identifier.
3
It may
correspond to a company’s trading name, represent a non-profit organisation,
* BA (UP) LLB (Unisa) LLM LLD (UP). Professor,Department of Mercantile Law, School of Law,
University of South Africa.
1
See http://root-servers.org (visited in October 2009); see also Joao Damas ‘The Root Server
System’, a presentation on behalf of the Internet Society at the World Summit on the Information
Society held in Geneva 10-12 December 2003, available at http://root-servers.org/presentations/
wsis.pdf (visited in January 2009).
2
Caroline Wilson ‘Domain Names and TradeMarks: An Uncomfortable Interrelationship’ in: Lillian
Edwards & Charlotte Wealde (eds) Law and the Internet 3 ed (2009) 311at 313.
3
Wilson op cit note 2 at 320.
661
(2009) 21 SA Merc LJ 661
© Juta and Company (Pty) Ltd
represent a generic class of goods or identify a topic of controversy.
4
A
domain name may also be reflected in an e-mail address and it may relate to a
telephone address.
5
The legal function of a domain name flows from the
non-abusive registration and use of the domain name as contained in
the contract between the registry and the registrant.
6
A registrant has a right
in personam rather than a right in rem.
7
The registrant is the domain name
holder for the duration of the registration contract. This right is subject to
temporal restrictions.
8
2.2 The Interface between Domain Names and Trade Marks
It is important for a company to link its established trading reputation to a
virtual presence in cyberspace through the registration of a domain name. It is
equally important for a company to prevent the unauthorised use of its trade
name or trade mark as a domain name online. There are a number of
important differences between trade marks and domain names.
The right to a trade mark is a property right, whereas the right to a domain
name is a personal right. Identical trade marks may be registered in the same
jurisdiction by a number of parties, provided that they are registered and used
in respect of different classes and goods or services, whereas identical domain
names cannot be registered.
9
Domain names are equally present in
cyberspace, and their use cannot be confined to national borders, whereas
trade marks are subject to territorial limitations.
Domain names cannot use the techniques that businesses use to distinguish
their trade marks.
10
A conventional trade mark can consist of any sign or
symbol capable of being represented graphically, including a device, shape,
container for goods, a pattern, ornamentation or colour.
11
Sensory marks are
also registrable as trade marks.
12
In addition to the variation in the form of a
trade mark, different types of marks exist, such as certification marks,
collective marks and well-known marks.
13
4
See Graham J Smith Internet Law & Regulation 3 ed (2002) at 83.
5
Wilson op cit note at 320.
6
Idem at 317.
7
See the comprehensive discussion of the classification of domain names by Eddie Hurter ‘The
International Domain Name Classification Debate: Are Domain Names ‘‘Virtual Property’’, Intellectual
Property, Property or Not Property at All?’(2009) 42 Comparative and International Law Journal of
Southern Africa 288.
8
Most domain name registrations remain valid for two years, after which they must be renewed.
9
See Wilson op cit note 2 at 330.
10
These techniques include devices or stylised marks incorporating colours, shapes, sounds, smells
and graphic forms of representation (see Julien Hofman, David Johnston, Sunny Handa & Charles
Morgan Cyberlaw: A Guide for South Africans Doing Business Online (1999) at 98; Wilsonop cit note
2 at 330).
11
See the definition of a trade mark in s 2(1) of the Trade MarksAct 194 of 1993.
12
See Wilson op cit note 2 at 328 with reference to ‘non-conventional trade marks’. Webster& Page
South African Law of Trade Marks Unlawful Competition, Company Names and Trading Styles by CE
Webster & GE Morley 4 ed (2008) (Service Issue 12) notes at 3-8 that, although theoretically a
fragrance and a jingle could fall within the definition of a trade mark, it is unlikely that the legislature
intended to protect fragrances as trade marks.
13
See ss 35, 42 and 43 of the Trade MarksAct.
(2009) 21 SA Merc LJ662
© Juta and Company (Pty) Ltd
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