When Is An Abusive Domain Registration, Not Abusive?

When Is An Abusive Domain Registration, Not Abusive?

In our practice, not a week goes by where we don’t caution our clients very strongly to secure trade mark and (online) domain registrations for their major brands – and promptly. A recent decision of the Gauteng North High Court has shown, yet again, the dangers of not heeding this advice. The critical facts of Rostruct Mining (Pty) Limited v Rosond (Pty) Limited are uncomplicated: Rosond registered the domain www.rostruct.co.za in its own name and, when Rostruct Mining learned of this, it lodged a complaint of an “abusive registration” and sought an order transferring the domain registration to it.

The history of this matter is long and acrimonious, and the judgment fairly long and technical – those facts are not relevant here, except to note this critical aspect of the ultimate judgment: because Rostruct Mining could not show that it had any trade mark rights in the word ROSTRUCT, its case failed, and the Court refused to come to its aid. Simply put: Rostruct Mining’s acrimonious opponent retained ownership of (what we suggest is, arguably) a dubious, mala fide registration, leaving Rostruct Mining firmly over the proverbial barrel.

At the risk of repetition: had Rostruct Mining simply have invested just a few thousand Rand in a single trade mark registration – undoubtedly – it would have stopped Rosond at the very first hurdle. Instead, after incurring a legal bill many, many times that amount, it is left with nothing, and also the real prospect of having to change its own name.

Penny wise; Pound foolish – in this day and age, ignoring trade mark and domain registrations is a recipe for disaster. In cases such as the Rostruct Mining case, it can even force the consideration of the closure of a business!


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