Tuesday, 10 June 2008

South Africa: first fan site decision

Warren Weertman (Bowman Gilfillan) has brought Afro-IP's attention to the the first case lodged in terms of the .ZA Domain Name Dispute Resolution Regulations (ZADRR) which deals with the issue of fan sites in South Africa. The case concerned the dispute between Automobiles Citroen and Mark Garrod, the owner of the citroen.co.za domain name. The decision is located here. He describes the case as follows:

"The facts of the case are, briefly, Automobiles Citroen has been the owner of the Citroen trade mark in South Africa since 1953. It kept this trade mark registration even during the 1980s when economic sanctions were imposed on South Africa and it did not formally trade in South Africa. However, when Citroen decided to re-establish its dealer network in South Africa and set up a website to promote their cars in South Africa, they found that the citroen.co.za domain name had been taken. The owner of the citroen.co.za registered the domain name in March 2000. The website associated with the citroen.co.za domain name was ostensibly a tribute site to Citroen cars. Whilst the website did not criticise Citroen cars in any way, the problem for Automobiles Citroen was that the citroen.co.za domain name was the obvious domain name for their website.

Ultimately the adjudicator found in favour of Automobiles Citroen and ordered the transfer of the domain name from Mr. Garrod to Automobiles Citroen. The adjudicator found that the citroen.co.za domain name did not convey to the public the true facts regarding the nature of the website associated with the citroen.co.za domain name. Simply put, this means that the domain name did not indicate to the public that when they accessed the website associated with the citroen.co.za domain name they would be accessing a tribute site for Automobiles Citroen and not the official website of Automobiles Citroen.

Importantly for brand owners, the adjudicator found that just because a brand owner was not quick enough to register an Internet domain name identical to their brand does not mean that they should be held to ransom by an Internet user that registered their domain name. This has important implications for brand owners and prospective critics / admirers of any given brand."

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