Telkom wins domain dispute

By Staff Writer for Telkom
Johannesburg, 16 Jul 2007

Telkom has become the first company to win a domain name dispute in terms of the new arbitration procedure that oversees local domain name disputes.

The case resulted from the registration of the telkommedia.co.za domain name, by Cool Ideas, in September 2006, shortly after Telkom Media announced its intention to start a subscription television service.

Telkom instructed Buys Attorneys to lodge a complaint with the South African Institute of Intellectual Property Law (SAIIPL) after Cool Ideas refused to transfer the domain name.

Although not the first case to be decided in terms of the regulations, it is the first in SA in which the adjudicator ordered a transfer of the domain name.

The decision was published on 13 July, by the SAIIPL, and found Telkom had succeeded in showing it had claim to the name Telkom, as it is similar to the domain name. It also found the registration of the domain name by Cool Ideas was an abusive registration.

The adjudicator, Andre van der Merwe, of DM Kisch Attorneys, also found Cool Ideas registered the domain name to intentionally block Telkom from registering the name and aimed at disrupting Telkom and its subsidiary Telkom Media's business.

Telkom Media spokesperson Chris van Zyl says: "It is important that companies are able to defend their intellectual property. Telkom Media is very happy with the decision."

Cool Ideas was not available for comment at the time of publication.

Reinhardt Buys, of Buys Attorneys, says compared to court proceedings, online arbitration of domain name disputes is much faster and affordable. If this matter was decided by the courts, the parties would have incurred legal fees of more than R500 000, whereas online arbitration only carries a R10 000 administrative fee.

In June, Buys Attorneys also lodged a complaint on behalf of Telkom regarding the telkombusiness.co.za domain name. This matter is pending.

In August 2004, before the online domain name dispute regulations in SA were formed, Telkom unsuccessfully tried to prevent the use and registration of helkom.co.za and telkomsucks.co.za.

Buys explains critical Web sites that operate from a domain name that include the name of a trademark-holder and a negative connotation like "sucks" are not disallowed by the new online arbitration regulations.

"However, the site must be used for fair criticism and not merely to sell it to the trademark-holder," he says.

SAIIPL is one of two institutions that administer domain name disputes in terms of the ZA Alternate Dispute Resolution Regulations published in November 2006 by the Department of Communications.