Sun International obtains transfer of ‘’

South Africa

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 became aware that Blue Chip Accommodation CC had registered the domain name ''. The website attached to the domain name promoted Sun International’s Sun City Resort, featuring images of the resort and inviting bookings for it.
Sun International claimed that because the website made direct reference to Sun City, an impression was created of an association between Sun International and Blue Chip. The website also stated that all the images were "courtesy of" Sun International Limited, which, according to Sun International, was misleading and without any authorization. Sun International claimed that Blue Chip’s intention was to ride on Sun International’s goodwill and reputation to attract business.
In response, Blue Chip alleged that the domain name '' did not use the SUN CITY trademark because the domain name simply described the services offered through the website - accommodation options at Sun City. According to Blue Chip, this benefited Sun International directly. Blue Chip also contended that it had always responded to queries in a timely manner, provided a good service to clients and assisted Sun City with many bookings.
After considering the evidence, the adjudicator held as follows:
  • Sun International had proven that it had sufficient rights in the SUN CITY mark to found the complaint.
  • The domain name '' 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 '' 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.
It is clear that it is not a defence to claim that the use of the domain name will benefit the complainant. Here, Sun International had no control over the website and its contents. An abusive registration begins with the registration of a domain name and the content of the website has no bearing on the issue. The adjudicator thus ruled that the registration was abusive and ordered that the domain name be transferred to Sun International.
Megan Reimers and Alicia Castleman, Spoor & Fisher, Pretoria  

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