A South African university has successfully objected to a domain name that incorporates the university’s nickname.
North-West University (“NWU”), once an exclusively Afrikaans-language institution that’s situated in the city of Potchefstroom, and that was formerly known as the Potchefstroom University College – or PUK – for short (the Afrikaans word for “college” starts with “k”), opposed a registration for the domain name propuk.co.za.
Many readers know that South African universities are volatile places right now, and one of the issues that bedevils them is language policy. The name propuk.co.za was used by a group of NWU alumni who are seemingly associated with a primarily Afrikaans trade union called Solidarity, and the site made it clear that the aim of those associated with it was to ensure that Afrikaans is retained as a language of tuition at NWU.
The South African Alternative Dispute Resolution (“ADR”) proceedings for domain names follow international norms. In order to succeed in an objection, you need to prove three things:
- that you have rights to a name;
- that the domain name is identical or similar to your name; and
- that the domain name is “abusive” in the hands of the registrant.
The domain name registration will be abusive if it was registered in a way that took unfair advantage of, or was unfairly detrimental to, the complainant’s rights. Examples of abusive conduct include:
- indications that the name was registered in order to be sold or to block a registration by the complainant;
- indications that the registration was acquired to disrupt the complainant’s business, or to prevent the complainant from exercising its rights;
- indications that the name is used in a way that causes confusion; and
- indications that the registrant is a cyber-squatter; in other words, someone who is in the habit of seeking abusive registrations.
In the earlier hearing, the adjudicator accepted that NWU has rights to the name PUK (it has both trade mark registrations and common law rights), and accepted that the names PUK and PROPUK are similar, but rejected the suggestion that the registration propuk.co.za was abusive in the hands of the registrant. The objection therefore failed.
A number of factors influenced the initial adjudicator. For example, the fact that the domain name was being used in a non-commercial manner, the fact that the objective was not to disrupt the business of the university but rather to protect the Afrikaans language on the campus, and the fact that it was unlikely to cause confusion, because it was quite clear from the site that it wasn’t an official university site. The adjudicator also mentioned the fact that international domain name cases tend to lean in favour of allowing the use of trade marks as part of domain names for the purpose of criticism, provided that “the use is fair and non-commercial”.
On appeal, this decision was reversed, but only just: two panellists upheld the appeal, one didn’t. The two who did, did so for a number of reasons. They made much of the fact that the applicant was linked to the trade union Solidarity, an organisation that has political aspirations and one that supports efforts to establish a new Afrikaans university community. They went so far as to say that Solidarity was the real user of the name. The relevance of this was that the domain name was being used for commercial purposes.
The two panellists also pointed to the fact that the registrant had not adopted a non-distinctive word, but rather chosen one that incorporated the trade mark of NWU. This, they argued, pointed to bad faith. They went on to find that the registrant had probably registered the name to block NWU from doing so. They also held that the domain name was causing confusion, because certain people believed that there was a link between the site and NWU, especially as NWU’s logo appeared on the site, together with information regarding NWU staff.
The third panellist, however, disagreed. She said that there was no proof of any bad faith, that there was no disruption of NWU’s business (especially as there was no proof that NWU even wanted the domain name), and that it was quite clear to any reasonable person that there was no connection between the site and NWU.
This has proved to be a tricky and controversial case, one that has resulted in two qualified ADR adjudicators finding that the registration was abusive, and two finding that it wasn’t. It’s no surprise really, given how vexed the underlying issues are in South Africa.