Domain Names • Saiipl

Domain Names

1. What is a domain name?
IP Addresses are hard to remember. The DNS makes using the Internet easier by allowing a familiar string of letters (the “domain name”) to be used instead of the arcane IP address. So instead of typing 207.151.159.3, you can type www.internic.net. It is a “mnemonic” device that makes addresses easier to remember.

2. What is the domain name system?
The Domain Name System (DNS) helps users to find their way around the Internet. Every computer on the Internet has a unique address – just like a telephone number – which is a rather complicated string of numbers. It is called its “IP address” (IP stands for “Internet Protocol”).

3. What is a gTLD?
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for example: .com, .net and .org. In addition, seven new gTLDs were also selected by ICANN (the Internet Corporation for Assigned Names and Numbers) on November 16, 2000. These are: .aero; .biz; .coop; .info; .museum; .name; and .pro.

4. What is a ccTLD?
A ccTLD is a country code top-level domain, for example: .za for South Africa. These ccTLDs are administered independently by nationally designated registration authorities. There are currently 243 ccTLDs reflected in the database of the Internet Assigned Numbers Authority (IANA).

GENERAL DOMAIN NAME DISPUTE FAQ

1. What is cybersquatting?
Domain name disputes arise largely from the practice of cybersquatting, which involves the pre-emptive registration of trademarks by third parties as domain names. Cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Since registration of domain names is relatively simple, cybersquatters can register numerous examples of such names as domain names. As the holders of these registrations, cybersquatters often then put the domain names up for auction, or offer them for sale directly to the company or person involved, at prices far beyond the cost of registration. Alternatively, they can keep the registration and use the name of the person or business associated with that domain name to attract business for their own sites.

2. Why can’t domain names be pre-checked to avoid cybersquatting?
There is no agreement within the Internet community that would allow organizations that register domain names to pre-check the filing of potentially problematic names. The reasons vary, ranging from allowing easy registrations to stimulate business, to the practical difficulties involved in determining who holds the rights to a name, to the principle of freedom of expression. Furthermore, the increasing business value of domain names on the Internet has led to more cybersquatting, which results in more disputes and litigation between the cybersquatters and the businesses or individuals whose names have been registered in bad faith.

3. What is the ZADRR?
The ZADRR is the alternative domain name dispute resolution mechanism that applies to .za domain names. This procedure can be used by people, who feel that their rights have been infringed by a domain name registration, to object to a domain name registration and try get the domain name objected to, transferred to them

4. Who is the South African Institute of Intellectual Property Law?
The South African Institute of Intellectual Property Law (SAIIPL) was established in 1954 and represents some 140 patent attorneys, patent agents and trade mark practitioners in South Africa who specialise in the field of Intellectual Property Law.

5. How did the SAIIPL come to be involved in the ZADRR?
In terms of the ZADRR Regulations, third parties who have experience in arbitration and domain name matters could apply to the Department of Communications to become accredited ZADRR dispute resolution providers. Accordingly the SAIIPL applied to become such an accredited entity and its application for accreditation was approved in early 2007 by the Department of Communications.

6. How does the ZADRR work?
In the event that a rights holder considers that a domain name registration infringes on their rights, the Complainant may initiate proceedings under the Regulations. Under the standard dispute clause of the Terms and Conditions for the registration of a .za domain name, the registrant must submit to such proceedings or to Court proceedings. The Registries in the .za name space consider the Regulations to be the equivalent of Court proceedings.
The ZADRR permits complainants to file a Dispute with a dispute resolution service provider, specifying, mainly: the domain name in question; the respondent or holder of the domain name; the registrar or registry with whom the domain name was registered and the grounds for the dispute. Such grounds include reasons why the domain name registration constitutes an abusive or offensive registration.

The respondent is offered the opportunity to defend itself against the allegations. The provider (eg: the SAIIPL) appoints an adjudicator who decides whether or not the domain(s) should be transferred.

6. What does the SAIIPL offer as a resolution service provider?
The SAIIPL’s resolution service offers highly qualified neutral panelists, thorough and expeditious administrative procedures, and overall impartiality and credibility. A ZADRR complaint is much faster than normal litigation in the courts. A domain name case filed with the SAIIPL is normally concluded within two months, using on-line procedures, whereas litigation can take much longer. Fees are also much lower than normal litigation. There are no in-person hearings, except in extraordinary cases. Minimal filing requirements also help reduce costs.

7. What are the results of the procedures, and are they binding?
A domain name is either transferred or the dispute is denied and the respondent keeps the domain name. It is also possible to seek cancellation of the domain name.

There are no monetary damages applied in ZADRR domain name disputes, and no injunctive relief is available. The accredited domain name registries, which have agreed to abide by the ZADRR, implement a decision after a period of ten days, unless the decision is appealed. The adjudicator’s decisions are binding in the sense that accredited registries are bound to take the necessary steps to enforce a decision, such as transferring the name concerned.

Regulations FAQ

1. What are the typical cases that the Regulations are designed to resolve?
Typically the ZADRR is meant to be used by third parties who want to complain about a domain name which infringes on their rights. For further information about “rights” click here. The ZADRR will thus broadly deal with the following cases:

i. where a domain name has been registered by the owner with the intention of selling the domain name;
ii. where the registered domain name incorporates the name of a business competitor;
iii. where the domain name incorporates a well-known company name or trademark;
iv. where a domain name has been registered by an ISP or ex-employee; and
v. where the domain name is offensive and against the good morals of society.

2. What are “Rights”?
The rights that the ZADRR protects are predominantly naming rights such as a trade mark rights, rights which you have in your business name, or rights that you have in your name. This does not mean that you need to have a registered trade mark in order to lodge a complaint.

The ZADRR regulations state that any right enforceable in terms of South African law can be protected using the ZADRR where you feel that the registered domain name infringes on your rights. You will also be able to lodge a complaint in terms of the ZADRR if you feel that a domain name infringes on your cultural or religious rights.

3. Who can lodge a ZADRR complaint?
It is important that when you lodge a complaint in terms of the ZADRR that the right being infringed upon is being infringed upon at that moment, or has infringed on your rights in the past. It will not be possible to lodge a complaint if you think that the domain name may infringe on your rights in the future.

For example, if you are relying on a trade mark to complain about a domain name registration, you must be using the trade mark or have used the trade mark at the time that you complain about the domain name. It will not be possible to complain about a domain name if you think that it may infringe a trade mark which you may register in two years time.
It is also important that the person complaining about the domain name be the person whose rights are being infringed by the domain name. This means that if someone has registered a domain name <>sucks.co.za, you as the person whose good name is being harmed must be the person in whose name the complaint is lodged.

4. What is an “Abusive Registration”?
This is a domain name registration which, when the domain name was registered took unfair advantage or was unfairly detrimental to your rights or is being used in a way that infringes your rights.

For example, if your company name is ABC and your competitor XYZ registers the domain name abc.co.za this would be an abusive registration since by registering the domain name, XYZ is preventing you from registering the domain name which matches your company name.

This would be an example of how a domain name registration can take unfair advantage of your rights or be unfairly detrimental to your rights. However, the facts of each case will need to be considered by an adjudicator in each case to determine whether the domain name registration was took unfair advantage or was unfairly detrimental to your rights since this test will vary from case to case. These are some other examples of what constitutes and abusive registration:

5. What is an “Offensive Registration”?
This is a domain name registration which is contrary to the good morals of the public.

For example, if someone registers the domain name martians-are-evil-liars.co.za and you are a Martian, you may be able to oppose the domain name registration since it is derogatory of Martians. This does not mean that if your complaint is successful that the domain name will be transferred to you. In terms of the ZADRR regulations, the offensive domain names will be deleted and third parties will be prevented from registering the domain name in the future. This means that the domain name will be blacklisted.

6. How do I lodge a dispute?
A model dispute can be found here. There are a couple of things that you will need to keep in mind when lodging a dispute, namely:

i. you will need to set out in sufficient detail any evidence you have that the registration of the domain name you want to oppose is an abusive registration bearing in mind the list of non-exhaustive factors in paragraph 4 of the Regulations;

ii. the second level administrators will maintain a hands-off approach to any domain name complaint. This means that if you have any queries regarding a dispute, you will need to contact an accredited ZADRR dispute resolution provider;

iii. the address you provide when completing your complaint needs to be a valid address in South Africa since if the Respondent elects to institute legal proceedings against you, they will be entitled to use the address you have provided as the address to serve any Court documents on you; and

iv. we have a word limit of <> of words. If you exceed this amount, your complaint will be sent back to you to amend to ensure that you comply with our word limit.
Once you have completed the documentation, you can submit the dispute in accordance with the guidelines provided for here.

You will also need to keep in mind that we require that <> of hard copies of the complaint will need to be sent to the physical address above.

7. Do I need a lawyer?
No. However, lawyers have been trained to deal with such domain name complaints and may be in a position to assist you better than if you try object to a domain name on your own.

8. How much will a dispute cost?
The cost of lodging a complaint with a single adjudicator is R10,000-00 and R24,000-00 if you want three adjudicators to hear your dispute.

This money needs to be paid to us, electronically, at the time that the complaint is submitted to us.

If the Respondent decides that they want three adjudicators to hear the matter then the Complainant and Respondent will be responsible for paying R12,000-00 to us (i.e. half the cost of a 3 adjudicator panel each) before the matter can proceed.

9. Will I get my money back if I win?
Unfortunately the Regulations do not make provision for recovering costs from the Respondent if you win your complaint.

10. How do I submit a response?
You can find a model response here. Anything you think which would tend to suggest this is probably something you should include (and prove) in your response, as that is the information which will best help you. Paragraph 5 of the regulations makes some suggestions about the topics you could cover.

More generally, provided that your registration and use was ‘fair’, it is better to put a full explanation of your motives and conduct in as a response than to stay silent as you are better presented at any decision.

Please bear the following important points in mind when submitting a response:

i. the second level administrators will maintain a hands-off approach to any domain name complaint. This means that if you have any queries regarding a dispute, you will need to contact an accredited ZADRR dispute resolution provider;

ii. the address you provide when completing your complaint needs to be a valid address in South Africa since if the Respondent elects to institute legal proceedings against you, they will be entitled to use the address you have provided as the address to serve any Court documents on you;

iii. we have a word limit of 5000 words. If you exceed this amount, your response will be sent back to you to amend to ensure that you comply with our word limit; and

iv. we will need to receive your response within 20 working days of us notifying you of the complaint. If we do not receive your response within the 20 days the matter will proceed without your response.

Once you have completed the documentation, you can submit the response to us in accordance with the guidelines published here.

11. Can I make a further submission to the adjudicator?

As a complainant, yes you can. Any such further submission will need to be made within 5 days of the Respondent submitting their reply and any such further submission may not exceed <> of words.

12. What do the adjudicators do and who are they?
The adjudicators are the arbitrators that will be making the ruling. These adjudicators are legal experts who are familiar with the provisions of the Regulations and have been appointed by us to act as adjudicators after a careful vetting process.

13. If a dispute goes to an adjudicator will I win?
No. The adjudicator will make a decision based on the documents before them at all times taking into account the provisions of the Regulations and precendent ZADRR cases.

14. How long will it take before I get a decision?
It will be approximately 14 working days from the time that the adjudicator is appointed to the time that the adjudicator will reach a decision. During this time, you may not make any contact with the adjudicator directly. All correspondence to an appointed adjudicator must be sent to us and we will then forward the correspondence to the adjudicator.

15. Can I see past decisions?
Absolutely. These decisions can be found at <> and you can make reference to these decisions in your complaint or response as a means of persuading the adjudicator about your case.

16. Can I appeal?
Absolutely, but only if your complaint was adjudicated by a single adjudicator. If three adjudicators decided your case you do not have a right of appeal.

If you do have the right to appeal and you feel that an adjudicator has not made the correct decision, you must submit a statement of intention to appeal within 10 days from the day that the adjudicator made their decision and this statement of intention to appeal must be accompanied by payment of R24,000-00 to us.

Once you have submitted your statement of intention to appeal and payment to us, you will then have 15 working days within which to file an appeal notice setting out the reasons why the adjudicator’s decision was wrong. This appeal notice may not exceed 1000 words.

Once a party has submitted an appeal notice, the other side will then have 10 working days within which to file an appeal notice response setting out (in 1000 words or less) why the decision of the adjudicator was correct.

Once we receive your documents, we will then appoint three adjudicators to hear the complaint. The adjudicators will then have 20 days within which to make a decision and forward that decision to us.

17. The adjudicator has found in my favour. Now what?
Congratulations. If you are the complainant, you will need to wait 10 working days before the decision can be implemented. The reason for the delay is that the Respondent may decide to appeal the decision, in which case the appeal process of the Regulations will come into play.

After the expiry of the 10 working days, the Registry will then be authorised to transfer the domain name to you. Although the Registry will be notified of the decision we suggest that you contact the Registry at the following address <> and provide them with a copy of the decision so that they can implement the decision on your behalf as soon as possible after the expiry of the 10 day waiting period.

If you are the Respondent and the adjudicator has found in your favour you do not need to do anything further, unless the Complainant decides to appeal the adjudicator’s decision, in which case the appeal process of the Regulations will come into play.

18. The Respondent is also infringing my rights in the offline environment. What can I do?
If you find that the Respondent, in addition to infringing on your rights in the online environment (in the form of the disputed domain name) is also infringing you’re your rights in the offline environment (by selling counterfeit goods with your trade mark on them), it will be possible for you to temporarily halt the ZADRR process and refer the matter to a Court of competent jurisdiction who can then make a ruling on the online and offline infringement.

If this happens, you will be refunded a portion of your complaint fees, less any administrative costs that we have incurred to date with the handling of your complaint.