The Dark Side of Domain Name Registration: increase in disputes in 2020

13 Nov 2020
13 Nov 2020

The COVID-19 pandemic has resulted in an overnight shift around the world. With everyone stuck at home, many businesses have had to adapt and move online to make ends meet. But what happens when you find that there is already a domain name registered with your business name or trademark? Worse still, the person, who registered the domain name, says they will sell it to you at an inflated price?

South African law provides protection against abusive registration by cybersquatters. Cybersquatting occurs when a person (the cybersquatter) pre-emptively registers a third party’s trademark or business name as a domain name with the aim of either selling it to the third party at a much higher price than the registration fee or using the name to lure customers to their own business. Such mala fide action may amount to infringement and the domain name removed if abusive registration can be proved. In other words, if it can be proved that the registration of the domain resulted in an unfair advantage for the cybersquatter or that it was detrimental to the third parties’ rights. 

In South Africa, domain disputes relating to .za domains (country code Top-Level Domains) can be resolved using alternate dispute resolution as provided for in the ECT Act's ADR Regulations  or by going to court. It is also possible to use the World IP Organisation (WIPO)'s UDRP (Uniform Domain Name Dispute Resolution Policy). For an example of a recent South African case, see the North Gauteng High Court's decision in Rostruct v Rosond.  For most businesses, relying on the ADR process and filing a claim at is more affordable and the process is easier and faster than litigation.  

Regulation 4 of the South African ADR Regulations, set out various factors that may indicate abusive registration:

(a) Circumstances indicating that the registrant has registered or otherwise acquired the domain name primarily to -

(i) sell, rent or otherwise transfer the domain name to a complainant or to a competitor of the complainant, or any third party, for valuable consideration in excess of the registrant's reasonable out-of-pocket expenses directly associated with acquiring or using the domain name;

(ii) block intentionally the registration of a name or mark in which the complainant has rights;

(iii) disrupt unfairly the business of the complainant; or

(iv) prevent the complainant from exercising his, her or its rights;

(b) circumstances indicating that the registrant is using, or has registered, the domain name in a way that leads people or businesses to believe that the domain name is registered to, operated or authorised by, or otherwise connected with the complainant;

(c) evidence, in combination with other circumstances indicating that the domain name in dispute is an abusive registration, that the registrant is engaged in a pattern of making abusive registrations;

(d) false or incomplete contact details provided by the registrant in the who is database; or

(e) the circumstance that the domain name was registered as a result of a relationship between the complainant and the registrant, and the complainant has -

(i) been using the domain name registration exclusively; and

(ii) paid for the registration or renewal of the domain name registration.

Looking at the Domain Disputes website's decisions page does not show a rise in complaints filed in 2020 or many cases related to COVID-19 related domain names, but the World IP Organisation reports that it is has experienced an upsurge in cybersquatting case filings and also with respect to COVID-19 related domain names. It gives several examples of such cases including: <> (WIPO Case No. D2020-0776) ; <> (WIPO Case No. D2020-0885) and <> (WIPO Case No. D2020-0617).

Businesses that find themselves in the midst of a domain dispute will want to resolve these, especially since their businesses will be primarily based on the internet due to the health related movement restrictions in place. However, despite the availability of this legal protection against abusive registration, the reality is that not all businesses and trademark holders can afford to go to court for such legal matters- especially now with the loss of business due to the pandemic and the recession. For many, the ADR process will be more suitable and some may have no option but to register a different  domain. 

Muofhe Tshifularo (13 November 2020)