Citroën car aficionado ordered to transfer ‘citroen.co.za’ domain name
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An adjudicator has ordered the transfer of the domain name ‘citroen.co.za’ to Automobiles Citroën, the well-known French automobile manufacturer (Case ZA2008-0014, May 29 2008). The case was brought under the South African Alternative Dispute Resolution Regulations, which were introduced on November 22 2006 to resolve disputes relating to domain names registered under certain portions of the ‘.za’ domain space.
Citroën is the owner of the trademark CITROËN, which was first registered in South Africa in 1953. Since 1997, it has maintained a website attached to the domain name ‘citroen.com’, which allegedly received in excess of 45 million unique visitors per month on average.
The registrant, Mark Garrod, was a Citroën enthusiast and had owned 30 Citroën cars. He had been a member of various branches of the Citroën Car Club for many years. Garrod registered the domain name ‘citroen.co.za’ on March 16 2000.
From 2001 until November 2004, there was an ‘under construction’ page linked to the domain name. In November 2004, the website attached to the domain name changed and started to feature active content. The new website included the statement "Welcome to ‘citroen.co.za’, the official website of Citroën enthusiast Mark Garrod".
Although Garrod was a Citroën cars aficionado, he made his living from a business unrelated to the car industry. Garrod’s website included a section which offered Citroën enthusiasts the opportunity to trade second-hand Citroën cars. Garrod did not charge for a classified ad to be placed. The website was operated solely in tribute of Citroën cars and Garrod did not criticize Citroën’s business in any way. No other make of car was mentioned on the website, nor were there any ads or links to other businesses.
Since at least 2001, the parties had made sporadic attempts to resolve the dispute concerning the domain name amicably, but these proved to be in vain. Citroën thus brought this action before the South African Institute of Intellectual Property Law, one of the two domain name dispute resolution providers for ‘.za’ domain name disputes. To obtain a transfer of the domain name, Citroën had to prove that the domain name was an abusive registration in terms of Paragraph 3(1)(a) of the regulations.
According to Paragraph 3, Citroën was required to prove that, on a balance of probabilities:
- it had rights in respect of a name or mark which was identical or similar to the domain name, and the domain name, in the hands of the registrant, was an abusive registration; or
- the domain name, in the hands of the registrant, was an offensive registration.
Paragraph 4 of the regulations lists a number of factors which may indicate that the domain name registration was not abusive. While the regulations pursue the same goal as the Uniform Domain Name Dispute Resolution Policy (introduced by the Internet Corporation for Assigned Names and Numbers in 1999 as a remedy for simple and obvious cases of cybersquatting), their scope appears to be slightly wider. For example, the regulations cover offensive registrations, as well as abusive registrations. A registration will be found to be offensive where the domain name advocates hatred that is:
- based on race, ethnicity, gender or religion; and/or
- constitutes incitement to cause harm.
Citroën argued that Garrod was fully aware of its rights in the CITROËN trademark and of its reputation when he registered the disputed domain name. Citroën alleged that Garrod had capitalized on its goodwill in the CITROËN trademark and confused internet users into believing that the site was connected to Citroën. According to Citroën, use of the word ‘official’ on the website added to the likelihood of confusion.
Garrod argued that when he registered the domain name, Citroën was not operating in South Africa. His understanding at the time was that Citroën had not been trading in South Africa for some 23 years and that it did not intend to return to South Africa. The domain name ‘citroen.co.za’ was thus the obvious choice for a domain name to pay tribute to Citroën cars in South Africa - rather than ‘ilovecitroen.co.za’, for example. The use of the word ‘official’ in the quote referred to Garrod, and not Citroën. Garrod was a well-known Citroën enthusiast in South Africa, and he wanted to make it clear that this was his official website.
Furthermore, Garrod argued that it had taken Citroën eight years to bring the complaint, which indicated that use of the domain name was not unfairly detrimental to it. In Garrod’s view, if there were substantial economic detriment, Citroën would have taken action a long time ago. Garrod also submitted that Citroën was able to exercise its rights by using another domain name, such as ‘citroensa.co.za’.
The adjudicator pointed out that the problem in this case was the conflict between the legitimacy of a tribute site and the rights of a complainant in its trademark.
The adjudicator agreed that Garrod had been aware of Citroën’s reputation when he registered the domain name. However, the adjudicator found that there was no indication that Garrod had registered the domain name in order to sell it. In the adjudicator's view, the facts did not indicate an inference of an intention to:
- block Citroën;
- disrupt its business; or
- prevent it from exercising its rights.
There was also no evidence of a pattern of bad-faith registrations in the name of Garrod.
Despite the fact that the adjudicator considered all of these factors to be absent, he found in favour of Citroën, stating that:
"when the mark of another is appropriated, it must be in a manner that cannot leave scope for doubt, but that it is wholly descriptive and truthful. When that happens, jurisprudence deems the use acceptable, otherwise not. In the adjudicator's view, ‘citroen.co.za’ does not meet this test."
The adjudicator noted that Garrod himself postulated ‘ilovecitroen.co.za’ as a possible alternative for the disputed domain name, but offered no explanation as to why this would not be appropriate. Instead Garrod averred that ‘citroen.co.za’ "would be the best domain to pay tribute to [Citroën]". The adjudicator had difficulty understanding why and noted that this was not explained. The adjudicator further wondered why Garrod had not enquired whether his adoption of the trademark in the domain name was acceptable. As the adjudicator remarked, the best accolade for a Citroën tribute site would be Citroën’s endorsement. In the view of the adjudicator, it was tempting to draw the inference that anticipated rejection prevented the enquiry.
Therefore, the adjudicator ordered the transfer of the domain name to Citroën.
David Taylor, Lovells LLP, Paris
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