Sun International obtains transfer of ‘suncityvacation.co.za’
In Sun International v Blue Chip Accommodation (Case ZA2008 - 0023, November 11 2008), an adjudicator at the South African Institute of Intellectual Property Law has highlighted the fact that even if a domain name registration promotes the complainant’s services, the registrant still does not have the right to use the complainant’s trademark or to ride on the complainant's goodwill and reputation.
Sun International (South Africa) Limited is the proprietor of approximately 80 trademarks incorporating the phrase 'sun city', dating as far back as the late 1970s. The Sun City Resort has been one of South Africa’s top tourist attractions for a long time and is extremely well known in South Africa. The resort offers accommodation, sporting and recreational activities and is considered to be a world-class destination.
- Sun International had proven that it had sufficient rights in the SUN CITY mark to found the complaint.
- The domain name 'suncityvacation.co.za' was similar to Sun International’s SUN CITY trademark, as the addition of the descriptive word 'vacation' did not set it apart from the Sun City brand.
- The use of the domain name 'suncityvacation.co.za' was not generic or descriptive, but rather use of the Sun City name as a trademark.
- The use of a domain name in the face of a well-known and registered trademark will inevitably mislead the public into believing that the registrant is associated with the complainant. Irrespective of the motives of the registrant, it is unfair to take advantage of the reputation of another, built up over a long period, without contributing in any significant way to that reputation.
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