Sun International has won the rights to an Internet domain name web site using the trademark of one of its prime South African assets, Sun City, after it had brought a complaint before the South African Institute of Intellectual Property Law (SAIIPL).
This is the latest of a number of domain name dispute brought before the SAIIPL.
Sun International had become aware that Blue Chip Accommodation CC had registered the domain name suncityvacation.co.za, says Megan Reimers, a partner at Spoor & Fisher.
"The web site, to be found at www.suncityvacation.co.za, promoted Sun International's Sun City resort, featuring images of the resort and inviting bookings for it," says Reimers. "Sun International is the proprietor of some 80 trademarks incorporating the phrase 'Sun City' dating as far back as the late 1970s."
Sun International claimed that because the web site made direct reference to Sun City, an impression was created of an association between Sun International and Blue Chip, says Reimers.
"The web site also stated that all the images were 'courtesy of' Sun International Limited, which was misleading and without any authorisation. 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 suncityvacation.co.za did not "use" the Sun City trademark because the domain name was simply describing the services offered through the web site – accommodation options at Sun City.
This, Blue Chip said, benefited Sun International directly. Blue Chip also contended that it had always responded timeously to queries, provided a good service to clients and assisted Sun City with many bookings.
After considering the evidence, the SAIIPL adjudicator made the following
* 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 indeed 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 such as Sun City would inevitably lead the public into believing that the registrant was associated with the complainant. 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, irrespective of the motives of the registrant.
"It is clear that it is not a defence to claim that the use of the domain name will benefit the complainant. The complainant has no control over the web site and its contents," says Reimers. "An abusive registration begins with the registration of a domain name itself and the content of the web site has no bearing on the issue. The adjudicator ruled that the registration was abusive and ordered that the domain name be transferred to the complainant.
"This decision shows 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 tradeimark or to ride on the goodwill and reputation of the complainant."