Telkom case shows why Minister must propagate regulations under the Electronic Communications and Transactions act 25 of 2002
The recent media exposure that has occurred around Telkom's objections to the
domain name telkomsucks.co.za illustrates why it is so important that the Minister
of Communications comply with her duties under the Electronic Communications
and Transactions Act and promulgate regulations for an alternate dispute mechanism
for the deciding of domain name disputes for the .za domain.
Telkom's letter of demand to the owner of the domain, which is based entirely
upon trademark infringement and/or defamation, shows the need for legal certainty
in this area The letter of demand states that Telkom do not object to the content
of the website, rather it is the name of the website - telkomsucks.co.za - that
they believe has caused them damages in the amount of R5 million.
In essence it is arguable that this is neither a trademark infringement nor
a defamation action - rather it is a domain name dispute and no more. One party
has registered a domain name and now another party, for whatever reason, objects
to this registration and use of the name.
On an international level, the procedures for domain name disputes have been
clearly set out and all the top level domains, e.g. .com, .org and so on, are
decided by the World Intellectual Property Organisation (WIPO), through a form
of dispute arbitration. This arbitration procedure has clearly set out guidelines
under which cases are decided. Disputes are submitted electronically to the
organisation in Switzerland on a daily basis, which then sends them for arbitration.
The process is quick and efficient and very cost-effective and has brought
a considerable degree of certainty to the law applicable to such disputes. Many
countries have accepted a very similar process for country level domains disputes
and most use procedure and guidelines which are identical to the WIPO ones.
In the Electronic Transactions and Communications Act that passed into law
in 2002 it is very clear that a similar adoption was envisaged;
Part 6
Alternative dispute resolution
69.
- The Minister, in consultation with the Minister of Trade and Industry, must
make regulations for an alternative mechanism for the resolution of disputes
in respect of the .za domain name space. - The regulations must be made with due regard to existing international precedent.
- The regulations may prescribe-
a. procedures for the resolution of certain types of disputes determined
in the regulations and which relate to a domain name registration;
b. the role which the Authority must fulfil in administering the dispute
resolution procedure;
c. the appointment, role and function of dispute resolution adjudicators;
d. the procedure and rules which must be followed in adjudicating disputes;
e. unlawful actions or activities in respect of domain names, distinguishing
between criminal and civil liability;
f. measures to prevent unlawful actions or activities with respect to domain
names;
g. the manner, costs of and time within which a determination must be made;
h. the implementation of determinations made in terms of the dispute resolution
procedure;
i. the limitation of liability of registrars and registries for implementing
a determination; and
j. the enforcement and publication of determinations.
The reference to "existing international precedent" can only really
mean to the precedent set by the WIPO decisions. The WIPO website clearly outlines
not only all the procedures and the guidelines used in this process but also
allows access to all the arbitration decisions made, thus making it very easy
for any practitioner or interested party to understand exactly how the procedure
is conducted and to understand the criteria under which decisions are made.
This promoted a high level of legal certainty and countries that have adopted
a similar dispute resolution mechanism on a national level can draw guidance
from the WIPO precedent base. An examination of the decisions made in the United
Kingdom for example, show that a number of very complex issues have been easily
resolved by drawing upon the WIPO guidelines.
The key to the WIPO guidelines is a three-stage test:
- Is the domain name identical or confusingly similar to a
trademark or service mark in which the complainant has rights? and - Does the domain name holder have no rights or legitimate interests in respect
of the
domain name? and - Has the domain name been registered and is being used in bad
faith.
There have been a number of decisions by the WIPO arbitrators that clearly
explain how these three principles are put into practice. For example there
are number of cases going to some detail as to the criteria for "bad faith
registrations". Where a domain name has been registered merely for financial
gain, so-called "cyber squatting", this is automatically seen as bad
faith.
As we move more and more into the information technology age, we in South Africa
need to keep our law in line with developments internationally. Old legal principles
relating to intellectual property and defamation do not necessarily fit neatly
into the new world of cyber law.
The ECT Act has been in force for more than 2 years - all that is required
is for the Minister of Communications, in conjunction with the Minister of Trade
and Industry, as the Act proscribes, to draft the regulations. This would give
clarity and certainty to this area of law, and the adoption of the WIPO model
would engender a dispute resolution system which is a lot faster and more a
cost-effective than an application to the High Court, as Telkom's letter of
demand threatens. This can only be to our benefit, both in our dealings amongst
ourselves and those with international bodies.
Please can we prioritise the drafting of these regulations!
[Postscript, communication with the appointed board members of the section
23 company formed under the act indicated that at this stage no action has been
taken with regards to drafting any regulations]
19 Aug 2004
This article is intended to provide general guidance and does not constitute professional advice relating to specific instances. Should you wish to place any reliance on the information presented in this article we strongly advise that you consult your legal advisor or the Electronic Law Consultancy - info@e-lawconsultancy.co.za
