Traverse Legal domain name dispute and website attorneys helped the website owner/registrant of the disputed domain name, va.co.za, to win a domain name dispute on appeal in a South African court. After initially suffering an adverse decision by the Adjudicator, the website owner prevailed on appeal and was able to retain possession of the disputed website. The Appeal Panel found that although a two letter generic domain name is possibly trademarkable, the complainant (owner of the device mark containing “V&A”) in this case failed to provide sufficient evidence to prevail on its trademark infringement and common law claims.
The V&A Waterfront filed the complaint with the South African Institute of Intellectual Property Law (“SAIIPL”). At the lower court level, a SAIIPL court Adjudicator rendered his decision in favor of V&A Waterfront on April 12, 2012. However, registrant/owner of the va.co.za website, Mr. Brandon Davids, appealed the SAIIPL Adjudicator's decision. Following Davids' appeal, on June 22, 2012 an Appeal Panel for the SAIIPL appellate court reversed the Adjudicator's decision and this time ruled in favor of Davids.
The complainant, V&A Waterfront, is the owner of the South African destination hotspot known as V&A Waterfront property, located in Cape Town, Western Cape, South Africa. Along with being voted South Africa's number one tourist destination, V&A Waterfront boasts more than 20 million annual visitors and during the 2010 Soccer World cup alone it hosted more than 3 million visitors.
As the basis for its domain name dispute complaint, V&A Waterfront relied on its device trademark registrations for marks that contain “VICTORIA & ALFRED WATERFRONT” and “V&A WATERFRONT”.
The Registrant/website owner is Brandon Davids, a South African citizen residing in London, who is in the business of registering generic domain names. Davids registered the va.co.za domain name on November 2, 2008, with the stated reason for registering the disputed domain name is that “it is a valuable generic two-letter domain name that is both memorable and marketable.” By early July of 2011, Davids began to use the va.co.za domain name in connection with an internet website aimed at providing internet users with information about accommodation, events and retail stores at the popular South African V&A Waterfront.
The Appeal Panel succinctly described Davids' use of va.co.za as follows;
“The Panel finds that the Registrant, by registering and using the domain name va.co.za, did nothing more than provide consumers with information and reviews concerning the facilities on offer at the V&A Waterfront area of Cape Town. This amounts to a bona fide description of the geographical origin of the services is question.”
In order to prevail on its complaint, V&A Waterfront was required (but failed) to prove that;
(i) it has rights in respect of a name or mark;
(ii) which is identical or similar to the disputed domain name; and
(iii) in the hands of the Registrant, the domain name is an abusive domain registration.
In making its determination as to whether V&A Waterfront has rights with respect to the mark, the SAIIPL Appeal Panel relied heavily on the factually similar case of Century City Apartments v. Century City Property Owners Association, 2010 (3) SA 1 (SCA), where the South African Supreme Court of Appeal had to consider an appellant’s reliance on Section 34(2)(b) of the Trade Marks Act 194 of 1993 (“the Act”) which, insofar as it is relevant, provides that “a registered trade mark is not infringed by the use by any person of any bona fide description or indication of the geographical origin of his services”. The facts in Century City are similar to those in the dispute over va.co.za and complainants in both cases relied on device marks to make the claim that respondents were infringing their trademark rights. In particular, the Century City court faced the same issue before Appeals Panel in this case; namely whether the name Century City (another one of Cape Town’s significant landmarks), was a trademark to which rights may adhere or whether it was purely a geographical location.
Harms DP presided over the Century City case and in rendering his decision he noted that different types of trademarks are used differently. In particular, he noted that a device mark is by definition a ‘visual representation or illustration capable of being reproduced upon a surface’. Harms DP went on to note that “the value (and distinctiveness) of such a mark depends heavily (and sometimes exclusively) on its visual impact.”
Ruling in favor of respondent website owner/registrant in Century City, Harms DP articulated the following as determinative for his findings;
“The Appellant’s services are provided mainly through advertisements and internet sites. There is no evidence of oral use of the device marks in relation to the services involved. The likelihood of confusion appears to me in the circumstances of the case to be negligible and can be discounted. Is follows from this that I am of the view that the Association has failed to establish infringement of the remaining device marks.”
Like in Century City, the complainant in the domain dispute over va.co.za failed to submit to the court evidence of oral use of the device marks in relation to the services involved;
“The device marks, viewed as wholes, primarily have a visual impact and their distinctiveness relies to a large extent on that visual impact. While the oral value of the marks may come to the fore when referred to with reference to their written components, there is no evidence of oral use of the device marks in relation to the relevant services.”
The marks are not identical or similar to the disputed domain name;
The Appeal Panel held that the “VICTORIA & ALFRED WATERFRONT” and “V&A WATERFRONT” device marks are not identical or similar to va.co.za. V&A Waterfront's trademark infringement claims were therefore properly ignored by the Panel;
“[T]he panel finds that the Adjudicator was correct in holding that the trade marks forming the subject matter of the Complainant’s trade mark registrations are not identical or similar to the disputed domain name. Accordingly, the Complainant’s registered trade marks will be ignored for purposes of this decision.”
Without recourse to its trademark infringement claims, V&A Waterfront had to rely on common law rights. Therefore, the issue became V&A Waterfront had established/acquired rights with respect to the mark, or more specifically, whether or not the V&A Waterfront has established a protect-able goodwill or reputation in the marks “V&A” or “V&A WATERFRONT”. The Appeal Panel held that the Adjudicator had erred in concluding that the above mentioned marks have acquired a general secondary meaning as trade marks (such that protect-able goodwill or reputation would adhere to the marks) in relation to all the services in issue, including hotel, restaurant, entertainment and retail services and their advertisement. The Appeal Panel went on to explain that “[u]se does not necessarily equate to distinctiveness and this is all the more so where a mark is a geographical name or otherwise has geographical significance.” (emphasis added).
“V&A” or “V&A WATERFRONT” is a geographical name, and V&A Waterfront has failed to provide evidence of secondary meaning sufficient to establish protect-able goodwill or reputation in the marks;
“On the evidence before it, the Panel finds on a balance of probabilities that the name V&A or V&A Waterfront is a geographical name. The fact that it is the most frequently visited destination in South Africa does not change this: to the contrary, it reinforces this finding. Indeed, the Complainant’s evidence establishes overwhelmingly the fame of the V&A Waterfront as a tourist destination, a harbour location set in beautiful surroundings with a multitude of service offerings from businesses established there and facilities that attract visitors.” (emphasis added).
A noteworthy takeaway - after receiving a threat letter, a registrant's removing his website or any allegedly infringing content is not a concession of wrongdoing by the registrant;
“The fact that the Registrant removed his website after receiving the Complainant’s letter of demand is not inconsistent with this finding. The Registrant did so in “[a]n abundance of caution” and did not concede wrongdoing in any way.”
The Adjudicator's decision was reversed by the Appeal Panel. With the help of expert intellectual property lawyers; Mr. Brandon Davids was able to retain ownership of va.co.za.
The full SAIIPL Appeal Panel's decision for the domain dispute over va.co.za [case no. ZA2011-0098] can be found here.