Telkom Media has won the right to its own .co.za domain name, in the first case in which a cyber squatter was ordered to transfer the domain to the brand owner.
Cool ideas 1290 cc, which registered the domain name telkommedia.co.za, was ordered to transfer the name to Telkom, says Mariëtte Viljoen, a partner at Adams and Adams.
“Cool Ideas registered the domain name on 4 September 2006. This was shortly after Telkom Media, a subsidiary of Telkom, announced its intention to apply for a satellite television subscription broadcasting licence from the Independent Communications Authority. This announcement received wide media attention at the time.”
When Telkom Media wanted to register the domain name in January 2007, it found the name already registered. The name resolved to a site stating that ‘this website is coming soon’.
Telkom lodged a complaint to the South African Institute of Intellectual Property Law, submitting evidence of its trademark registrations, the earliest dating back to 1991. It also submitted evidence of its extensive use of the trademark Telkom – among others, that it is one of the 10 top best-known brands in South Africa.
The adjudicator ruled that Cool Ideas had registered the domain primarily to block the registration of the name by Telkom. It also ruled Cool Ideas intended to disrupt the business of Telkom and Telkom Media with this registration. Furthermore, the adjudicator ruled that the registration was made in bad faith to prevent Telkom from exercising its trademark rights.
Cool Ideas also submitted incomplete contact details of the administrator keeping the database with information like the name of the registrant and contact details. This would enable third parties to contact the party that registered the domain.
The adjudicator referred to foreign decisions and ruled that this was a further indication that the domain registration was made in bad faith. He ruled that the domain name was an abusive registration and ordered the transfer of the domain name.
Viljoen says this ruling sends a clear message to cyber squatters to refrain from registering well-known brands in their own names.
“This case was cost-effectively solved in about six weeks. The days of brand owners paying exorbitant amounts to cyber squatters are hopefully now something of the past,” she says.