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Registration and use of domains at ccTLD registry
Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?
Initially, the administration of the ccTLD .za was managed by Uninet. However, owing to the increase in registrations over time, this responsibility was handed over to the ZA Domain Name Authority (ZADNA), which was established under the terms of section 59 of the Electronic Communications and Transactions (ECT) Act 25 of 2002.
The responsibilities of ZADNA include:
- the administration and management of the .za namespace in compliance with international best practice;
- licensing and regulating domain name registries;
- licensing and regulating the registrars for the respective registries; and
- providing guidance on the administration and management of the .za domain namespace, requirements and procedures for domain name registration, and maintenance of and public access to a repository.
How are domain names registered?
Depending on the registration criteria for the specific subdomains in the .za domain space, a domain name may be registered by any person or entity based or active in South Africa or elsewhere. Applications for registration must be done through a duly authorised registrar, who will process the applications at the relevant registry according to applicable regulations, policies and procedures (www.zadna.org.za/content/page/policies).
A domain name applicant must submit at least two independent and operational name server hosts (primary and secondary) in order to successfully register a domain name. The registration form provided by the domain name registrar or registry will further require the applicant to submit contact details (including postal addresses, telephone numbers, fax numbers and email addresses), as well as the administrative and technical contacts for the domain name. The email address for billing must also be submitted.
For how long is registration effective?
A domain name registration is effective indefinitely as long as it is renewed annually, subject to the payment of an initial and then annual renewal fee (www.zadna.org.za/content/page/policies).
What is the cost of registration?
Costs are dependent on the registrar selected for registration as well as the specific subdomain space. Costs for registration in the most popular subdomain space, .co.za, are in the region of 150 rand.
Are registered domain names transferable? If so, how? Can the use of a domain name be licensed?
Domain names are transferable by agreement, and transfer is effected through cooperation of the registrars and registrants involved. Once a transfer request has been submitted by a domain name registrant to the relevant registrar, the registrar effects the transfer request at the registry for the domain name in question and the domain name is then marked and prepared for transfer.
As part of the transfer process, all contacts listed for the domain name are advised of the proposed transfer, and may indicate an approval or refusal of the transfer. Should no objection to the transfer be made, at the conclusion of a predetermined waiting period for the transfer, the new registrar or registrant is recorded.
Domain names may, absent any agreement, also be transferred under the following circumstances:
- where such transfer comes as a result of an outcome of a dispute resolution process;
- where an order of court directs such transfer;
- where a registrant’s rights are revoked based on its non-compliance with a second-level domain policy; or
- as a result of a measure taken in the interests of a stable domain name system.
Generally, upon being informed of a domain name dispute, the registry concerned must take steps to ensure that the domain name in question is not transferred. In practice, the domain name will be locked and the registrant will be limited to updating the domain name’s technical information.
The use of domain names may also be licensed by the registrant to a third party through the conclusion of a licence agreement regulating the licensee’s use of the domain name.
ccTLD versus gTLD registration
What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?
There are no significant differences in the registration process of .za domain names and gTLD domain names. WHOIS records contain similar information.
Can the registrant use a privacy service to hide its contact information?
It is possible for a domain name registrant to substitute its identity and contact information with that of a chosen registrar, and in so doing maintain ownership of the domain name.
Disclosure of registrants’ private details
Under what circumstances will a registrant’s privacy-protected contact information be disclosed? What processes are available to lift a registrant’s privacy shield?
A registrar may be requested to provide the details of the registrant, but is not under obligation to do so. However, in the likely event that such an approach is unsuccessful, reasons for the surrender of the registrant’s information may be submitted to the ZA Central Registry (ZACR), which may request such details from the registrar. ZACR is also under no obligation to make a request of this nature and will, based on the reasons submitted, decide whether to assist on a case-by-case basis.
Are third parties (such as trademark holders) notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?
Domain name registrations are managed separately from trademark registrations, with the party responsible for the administration of domain names in the .za domain name space being ZADNA, whereas the Companies and Intellectual Property Commission administers trademarks. There is no automatic notification system in place in respect of domain names.
Notice to the registrant
Is there a need to notify the domain name registrant before launching a complaint or initiating court proceedings?
There is no formal requirement to notify a registrant prior to the launch of an ADR complaint or court proceedings. However, there is a risk of an adverse costs award where a litigant in court proceedings does not notify a defendant of potential proceedings in advance, the purpose being to provide an opportunity for the other party to remove the cause for complaint.
Transfer or cancellation
What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?
Domain name cancellation or transfer actions are brought either through ADR or High Court proceedings.
In ADR proceedings, upon receiving notification of a domain name dispute, there is an obligation on the registrar not to transfer, delete or refuse to renew the domain name that is the subject of an ADR proceeding.
A dispute will be lodged with the relevant service provider, who will forward it to the domain name registrant. The registrant will have 20 days from the date of the commencement of the dispute to submit a response to the dispute to the service provider. A complainant has a right of further reply, which must be submitted within five days. Supplementary documentation may only be filed in exceptional circumstances. Once all the case documents have been filed, an adjudicator will be appointed. The complainant must specify in advance whether a single adjudicator or three adjudicators should be appointed. There are no hearings, and disputes are decided based on the documents submitted. The adjudicator must forward its decision to the service provider within 14 days of its appointment, and that service provider will communicate the full text of the decision to each party within three days.
As there are no specific laws on cybersquatting, other than the ADR regulations that form part of the ECT Act, trademark proprietors who elect to approach the High Court usually claim relief in terms of the Trade Marks Act and, to some extent, also common law. Civil action instituted in the High Court can take up to two years to be concluded, whereas a court injunction brought on an urgent basis usually takes between one week and one month to finalise, and is only available in very limited circumstances.
Depending on the type of relief claimed in High Court proceedings, matters are argued either as part of motion proceedings on the basis of submitted documentation, or as part of trial proceedings on the basis of pleadings coupled with oral evidence.
Choosing a forum
What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?
ADR proceedings in domain name disputes allow for cost-effective and timely dispute resolution. There is also allowance for a mechanism to prevent the transfer of a disputed domain name pending the conclusion of the proceedings. ADR proceedings do not allow for monetary relief, costs awards, hearings, an appeal process following a decision by three adjudicators, or any restraining orders.
On the other hand, High Court proceedings are costly and time-intensive and there is no mechanism to prevent the transfer of a disputed domain name pending the conclusion of the proceedings. A High Court may issue an order for costs or monetary relief, as well as a restraining order that prevents use of the infringing mark. An appeal process also exists from a single judge in the High Court to the full bench of the High Court, the Supreme Court of Appeal or the Constitutional Court.
A local High Court would be preferable to litigate a gTLD dispute where the respondent is based locally and the complainant seeks monetary relief or a restraining order.
What avenues of appeal are available?
The ADR Regulations make provision for either party to appeal the decision of a single adjudicator to a panel of three adjudicators, which must be exercised by filing a statement of intention to appeal within four days following receipt of the decision and which must within 15 days be followed by an appeal notice. No appeal is available following a decision delivered by three adjudicators, although review proceedings may in these cases be initiated in the High Court.
With respect to High Court proceedings, an aggrieved party may appeal the decision of a single judge or the full court to the full court, to the Supreme Court of Appeal or directly to the Constitutional Court, depending on the circumstances.
Who may claim
Who is entitled to seek a remedy and under what conditions?
The ADR Regulations provide that for a complainant to be entitled to seek a remedy it must be shown that it has rights in respect of a name or mark that is identical or similar to the domain name in question and that the domain name, in the hands of the registrant, is an abusive registration. Alternatively, the complainant would have to prove that the domain name in question constitutes an offensive registration, as defined in the regulations.
With respect to court proceedings, the proprietor or licensee of a registered or common law trademark may be able to seek a remedy against a registrant on the basis of trademark infringement or passing-off.
A party may also be in a position to take action based on the law of contract, depending on the circumstances of the matter.
Who acts as defendant
Who may act as defendant in an action to cancel or transfer a gTLD in local courts?
In the majority of instances the registrant is cited as the defendant, although there may be circumstances, mostly in High Court litigation, when a registry or registrar may also be cited as a defendant.
Burden of proof
What is the burden of proof to establish infringement and obtain a remedy?
In order to obtain a remedy in terms of the ADR Regulations a complainant would have to prove on a balance of probabilities that a registered domain name is either an abusive or offensive registration. An abusive registration is defined as a domain name that either takes advantage of or is unfairly detrimental to a complainant’s rights, or has been used in a manner that takes unfair advantage of or is unfairly detrimental to a complainant’s rights.
An offensive domain name registration is defined as a domain name that is contrary to law, contrary to good morals or likely to give offence to any class of persons.
Factors indicating that a domain name is an abusive registration include the following:
- evidence that the registrant has acquired registration of the domain name to sell, rent or transfer the domain name to a third party, or intentionally block the registration of a domain name in which a complainant has rights, disrupt the business of the complainant or prevent the complainant from exercising its rights;
- where it is shown that the domain name is used, or was registered in a manner that would lead the public to believe that it is registered to, operated or authorised by the complainant;
- evidence that the registrant is engaged in a pattern of making abusive registrations;
- false or incomplete contact details provided by the registrant on the WHOIS database; and
- where a domain name was registered as a result of a relationship between the complainant and registrant and the complainant has been using the registration exclusively, having paid for its registration and renewal.
There is a rebuttable presumption of an abusive registration if the complainant proves that the registrant has been found to have made an abusive registration in three or more disputes in the two years before the dispute was filed.
Also, the burden of proof shifts to the registrant to show that a domain name is not an abusive registration if it is identical to the mark in terms of which a complainant claims to have rights.
In High Court trademark infringement or passing-off proceedings, a litigant initiating proceedings must prove on a balance of probabilities that the rights it has acquired in its mark have been infringed by the use or registration of the domain name in question.
What remedies are available to a successful party in an infringement action?
In ADR proceedings, where it is proven that the domain name registration is an abusive registration, a complainant would be entitled to request that the domain name in question be transferred to it. An additional remedy of cancellation of abusive registrations was introduced in the new ADR Regulations published in November 2017. Cancellation will be considered when the complainant and a third party both have rights in the name and it is a more appropriate remedy than the refusal or transfer of the domain name. In instances where the domain name is found to be an offensive registration, the complainant would be entitled to request that the domain name be deleted, and for its future registration to be prohibited.
In High Court proceedings involving domains, the following remedies are available to a successful litigant:
- an injunction to restrain further infringement;
- an order for the transfer or deletion of the domain name;
- an award for damages, which may be calculated as a reasonable royalty that would have been payable had the infringing property been used under licence;
- delivery of any materials on which the infringing domain name or trademark appeared; and
Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?
No injunctive relief is available in terms of ADR proceedings. A summary decision process has, however, been introduced in the new ADR Regulations published in November 2017. This makes it possible, in cases where the registrant does not submit a response, for an adjudicator to deal with the complaint more expeditiously. An order in terms of ADR proceedings to cancel, transfer or prohibit the registration of a domain name in question is permanent.
Preliminary and injunctive relief are available in High Court proceedings, as long as the applicant for such relief is able to prove:
- a prima facie right that requires protection;
- a reasonable apprehension of irreparable harm if the injunction is not granted;
- that there is no alternative satisfactory remedy available to the applicant; and
- that the balance of convenience favours the granting of such relief.
How is monetary relief calculated?
No monetary relief is available in terms of ADR proceedings.
In High Court proceedings based on the Trade Marks Act, the court may make an appropriate order for monetary relief for the actual monetary loss suffered as a consequence of the infringement of the applicant’s rights. At the option of the proprietor of a trademark, an order may instead be made for the payment of a reasonable royalty that would have been payable by the infringing party if a valid licensing agreement had been concluded between the parties. Monetary relief may also be claimed in common law passing-off proceedings, in which case the actual monetary loss suffered must be proven.
What criminal remedies exist, if any?
Is there a time frame within which an action must be initiated?
In respect of ADR proceedings, neither the regulations not the ECT Act place an obligation on a complainant to institute proceedings within any specific time frame. There are also no set time frames prescribed to institute High Court proceedings, bearing in mind that delictual debts expire three years from when prescription starts, which is usually when the claimant becomes aware of the facts giving rise to the cause of action.
Expiry of rights and estoppel
Can a registrant’s rights in a domain name expire because of non-use. Can a registrant be estopped from bringing an infringement action? In what circumstances?
The non-use of a domain name registration would not automatically result in the registrant forfeiting any rights therein. The registration period for a domain name is unlimited, provided that the registrant complies with the applicable policies, charters and renewal requirements.
With respect to the doctrine of estoppel, a party can generally only be estopped from bringing an action if it has performed a positive act, by conduct or otherwise, resulting in the belief that the possessor of the property right has the right to dispose of it. The doctrine of acquiescence is not recognised, so the fact that a party may have stood by in the face of infringing conduct would not necessarily preclude it from taking action.
Time frame for actions
What is the typical time frame for an infringement action at first instance and on appeal?
Given the nature of High Court litigation, an action for the infringement of a trademark can take approximately two years to be concluded. When action is brought to court on an urgent basis, however, the matter can take between one week and one month to finalise. The time frame to conclude an appeal process in an infringement action is comparable with the time associated with the action at first instance.
By contrast, a domain name dispute resolved through ADR is usually concluded within two months. An appeal to a domain name decision of a single adjudicator also takes about two months to finalise.
Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?
Previous domain name disputes resolved through ADR as well as an index categorising the cases are available to panellists, practitioners and the public online at www.domaindisputes.co.za, and provide insight into procedural and substantive issues. The ADR Regulations provide that adjudicators should consider and be guided by case law in making decisions, as well as decisions by foreign dispute resolution providers where necessary.
Appointment of panellists
Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?
Parties to a domain name dispute do not select adjudicators. They are appointed at the sole discretion of an accredited domain name dispute resolution service provider. The ADR Regulations stipulate that providers are to maintain and publish a list of adjudicators, including their qualifications, which should be made available to the public. Furthermore, adjudicators must be impartial and independent, and must disclose to the provider any factors affecting their impartiality and independence before accepting an appointment to decide a dispute.
The parties to a domain name dispute may elect whether they would prefer to have one or three adjudicators appointed in the matter, who will then be selected by rotation from the list of adjudicators. The appointment is notified to the parties and opportunity is provided for objection to the proposed appointment.
What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal? Can these costs be recovered?
In ADR proceedings, the fixed fees to lodge a complaint to a provider for a decision by a single adjudicator or three adjudicators are 10,000 rand and 24,000 rand respectively. The fixed fees will be reduced by 50 per cent if a summary decision is provided. Counsel fees to prepare and respond to the documents filed in ADR proceedings depend greatly on the complexity of the case and volume of documents submitted. Pre-litigation costs also vary on a case-by-case basis, and are dependent on the nature of the pre-litigation procedures.
The costs associated with High Court infringement proceedings are generally about 50-70 per cent higher than those associated with ADR proceedings due to additional procedural steps and in person hearings. It is not possible to recover costs following ADR proceedings, whereas infringement proceedings through the High Court make such recovery possible.
Update and trends
Update and trends
Are there any emerging trends or hot topics regarding domains and domain names in your jurisdiction?
New Regulations to the ADR Regulations were promulgated in November 2017, which include primarily:
- the introduction of a mandatory mediation process prior to the appointment of an adjudicator;
- an additional remedy of cancellation of an abusive registration;
- a summary decision process; and
- consequences in respect of repeat findings of reverse domain name hijacking.