ADR regulations promulgated for '.co.za' domain name disputes
Alternative Dispute Resolution (ADR) regulations have been promulgated by the minister of communications in South Africa under Section 69, read with Section 94, of the Electronic Communications and Transactions Act 2002, in consultation with the minister of trade and industry.
These regulations are to be welcomed as legitimate right owners will be able to use the ADR procedure as soon as accredited domain name service providers (providers) have been appointed by the '.za' Domain Name Authority (authority). Each accredited provider should have its own supplementary procedure or rules for the purposes of dealing with domain name disputes. The regulations apply only to internet domain names registered in the '.co.za' second-level domain.
The ADR rules provide that an application for or holder of a domain name (registrant) must submit to proceedings under the rules as set out in the regulations if a complainant asserts, in accordance with the procedure, that:
- the complainant has rights in respect of a name or mark which is identical or similar to the domain name and, in the hands of the registrant, the domain name is an abusive registration; or
- the domain name, in the hands of the registrant, is an offensive registration.
The complainant is required to prove on a balance of probabilities to the adjudicator, who is appointed by a provider, that the elements as set out in the bullet points referred to above are present.
An 'abusive registration' is defined as a domain name which either:
- was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of, or was unfairly detrimental to, the complainant's rights; or
- has been used in a manner that takes unfair advantage of, or is unfairly detrimental to, the complainant's rights.
Whereas, an 'offensive registration' is defined as:
"a domain in which the complainant cannot necessarily establish rights but the registration of which is contrary to law, contra bones mores or is likely to give offence to any class of persons."
The regulations also list various factors which may be taken into account as evidence of an abusive or offensive registration.
It is interesting to note that nothing done in terms of the regulations prevents any party from litigating on any related matter in the High Court of the Republic of South Africa. Accordingly, certain trademark proprietors may rather opt to institute trademark infringement proceedings in the High Court.
The regulations provide that in the event of a second-level domain administrator, who is responsible for implementing a decision of an adjudicator in terms of the regulations, learning that legal action has commenced in the High Court of the Republic of South Africa, it may not implement an adjudicator's decision and cannot take further action until it receives:
- proof of a resolution or settlement between the parties;
- proof that the law suit has been dismissed or withdrawn; and
- a copy of a court order.
The time periods provided in the regulations for the dispute resolution procedure are fairly stringent with the result that an adjudicator's decision can be implemented within 55 days of the date of commencement of the complaint. A provider must ensure that the dispute complies with the provisions of the regulations and that the fixed fee has been paid.
The adjudicator, who is appointed by the relevant provider, must decide a dispute in accordance with the principles of law and must consider and be guided by previous decisions made in terms of the regulations and decisions of foreign dispute resolution providers. If three adjudicators consider a dispute, the consentient views of at least two adjudicators shall constitute the decision.
Either party shall have the right to appeal a decision of a single adjudicator by submitting a statement of intention to appeal together with the appeal fee, which must within 15 days be followed by an appeal notice. On a strict interpretation of the regulations, there does not appear to be an exact timeframe for submitting a statement of intention to appeal. However, it is likely that this issue will be clarified in the supplementary procedure or rules of each accredited provider, once appointed by the authority.
The ADR regulations also provide for the accreditation of providers to the '.co.za' domain name authority in order to determine whether prospective applicants seeking accreditation demonstrate an ability to handle proceedings in an expedited, online context in a fair manner. At this stage, the '.co.za' domain name authority has not yet accredited any providers. However, the process of accreditation of providers should be finalized within a couple of months, allowing aggrieved parties who had no alternative but to litigate in the High Court to use the less costly ADR procedure.
Duncan Maguire, Spoor & Fisher Attorneys, Pretoria
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