Thursday, June 07, 2007

By Warren Weertman

If you are not familiar with the term "cybersquatting", you are probably familiar with the practice of cybersquatting. Cybersquatting is when a third party Internet user registers an Internet domain name incorporating your company’s name or your company’s trade marks. Typically, cybersquatters will then try sell the domain name back to you at an inflated price.

Up until now, it has been relatively easy to stop cybersquatters who are squatting on .com, .net, or .org domain names due to an alternative dispute resolution procedure called the "Uniform Domain Name Dispute Resolution Procedure" or "UDRP". The UDRP is a relatively inexpensive and quick way of objecting to a domain name that incorporates your trade marks, and if the arbitrator or Panellist finds in your favour, the domain name will be transferred to you.

The problem of cybersquatting has persisted in South Africa due to the absence of a domain name dispute resolution procedure like the UDRP. We were asked by the Department of Communications to assist with the drafting of a dispute resolution procedure for .za domain names and on 20 April 2005 draft regulations for such a procedure were published. Whilst some time has passed since the initial draft regulations were published, behind the scenes an extensive consultation process has been going on between interested parties and the various stakeholders in the domain name industry in South Africa, particularly Uniforum SA the administrators of CO.ZA (the largest name space on the African continent).

The final version of the regulations for the domain name dispute resolution procedure was published on 22 November 2006. As of 3 April 2007 it is now possible to lodge disputes with the South African Institute of Intellectual Property Law (SAIIPL) which was recently accredited as a Domain Name Dispute Resolution Service Provider. Indeed, Mike du Toit and Dr. Wim Alberts serves on the panel of senior adjudicators while a number of our partners and associates are on the list of trainee adjudicators.

So how will the procedure work? In a nutshell, a complainant will lodge a complaint with an accredited dispute resolution provider. The dispute resolution provider will then notify the owner of the domain name. Regardless of whether the owner submits a response to the complaint or not, once a period of 20 days has lapsed, the complaint and response (if any) will be submitted to an arbitrator. If the owner does submit a response, the complainant will have an opportunity to submit a reply dealing with any allegations raised in the owner’s response. The arbitrator will then reach a decision based on the complaint, response (if any), and the complainant’s reply (if any). All-in-all the process should take less than 60 days.

What about the cost? The cost for lodging a complaint with an accredited dispute resolution provider is R10,000-00 excluding any legal costs for preparing a complaint. Whilst this may seem exorbitant, the amount needs to be weighed against the cost and length of ordinary High Court litigation. Unfortunately there is no provision for the recovery of costs from the Respondent, but this is in line with the majority of domain name dispute procedures.
On the whole we believe that this domain name dispute resolution procedure will prove to be an effective means of combating the scourge of cybersquatting in South Africa.