Previous employee ordered to transfer domain name to employer
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When registering a domain name, the applicant for registration is not required to show any interest or prove that it has any rights in the domain name. As a result, domain name disputes have often arisen and, in a recent decision handed down by the South African Institute of Intellectual Property Law, the complainant was successful in showing that the registration of the domain name 'pocket-media.co.za' by a previous employee was an abusive registration in the hand of the registrant (ZA2010-0058, November 30 2010).
The complainant, George Wallace McDonald, is the proprietor of numerous trademark registrations consisting of, or incorporating, the word 'pocketmedia', with rights dating back to the 1990s, which clearly predate the registration date of the domain name (June 3 2010). The POCKETMEDIA marks have been used continuously in South Africa by the complainant’s licensee in relation to a wide variety of goods, such as cards, stationery, folders and binders.
The complainant lodged its complaint when it discovered that the registrant, a previous employee of its licensee, had registered the domain name 'pocket-media.co.za' and used it on its website to market and sell competing products to the complainant’s Pocketmedia products.
The complainant submitted that:
- the domain name was, for all intents and purposes, visually, phonetically and conceptually identical to the complainant’s POCKETMEDIA marks; and
- the only difference between the 'pocket-media.co.za' domain name and the POCKETMEDIA mark was the inclusion of the hyphen between the words 'pocket' and 'media'.
According to the complainant, this was not sufficient to distinguish the domain name from the marks.
Furthermore, the complainant submitted that, even though the registrant sold these competing products under a different mark on the 'pocket-media.co.za' website, there was no reason for the registrant to use the POCKETMEDIA mark. In this regard, the complainant submitted that neither the registrant nor its products are commonly known by the POCKETMEDIA mark, and that the registrant ordinarily traded under a name which is completely different to the POCKETMEDIA mark.
The complainant also submitted that, had it not been for the registrant’s employment with the complainant, the registrant would not have chosen the POCKETMEDIA mark to promote its products. The complainant argued that the registrant deliberately used the POCKETMEDIA mark in order to leverage off the reputation vested in the complainant’s mark so as to attract customers to its website, which promotes similar products to those of interest to the complainant under its POCKETMEDIA mark.
Finally, the complainant submitted that the above factors showed the registrant’s intended bad faith ultimately to confuse the public into believing that the registrant’s business and the complainant are connected or associated in the course of trade. As a result, the complainant submitted that the registrant’s registration of the 'pocket-media.co.za' domain name was an abusive registration.
According to the '.za' Alternative Dispute Regulations, an abusive registration occurs in circumstances where the registration of the domain name takes unfair advantage of the right of the complainant, such as its IP rights.
After considering the evidence, the adjudicator was of the opinion that the complainant had statutory and common law rights in his POCKETMEDIA mark and that the 'pocket-media.co.za' domain name was identical to the complainant’s POCKETMEDIA marks. Furthermore, the adjudicator found that, since the complainant showed that it had rights in a mark which is identical to the domain name, the burden of proof shifted to the registrant to show that it was not an abusive registration.
The registrant failed to respond to the complaint and, since there was no evidence to the contrary before the adjudicator, the latter ruled that the registration was abusive and ordered that the domain name be transferred to the complainant.
Alicia Castleman, Spoor & Fisher, Pretoria
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