Automobiles Citroen lodged an ADR complaint against Mark Garrod, through the South African Institute of Intellectual Property Law, for his registration of the domain name Citroen.co.za. Mr Garrod registered citroen.co.za on 16 March 2000.
Automobiles Citroen had registered its trade mark in South Africa in 1953 but did not conduct business in South Africa at the date of the registration of citroen.co.za.
In 2004 Mr Garrod set-up a website at citroen.co.za as a tribute to Citroen cars. The website was not used for commercial purposes and had the following statement on its home page “Welcome to www.citroen.co.za, the official website of Citroen enthusiast Mark Garrod”.
Although Mr Garrod was successful in establishing that the domain name was not an abusive registration in terms of the ADR Regulations, the Adjudicator ordered the transfer of the domain name to Automobiles Citroen.
The Adjudicator held that the problem in this case was the “conflict between the legitimacy of (the name for) a tribute site, and the rights of the Complainant in and to its trade mark”.
The Adjudicator summed up the principle in this case as follows “when the mark of another is appropriated, it must be in a manner that cannot leave scope for doubt but that it is wholly descriptive and truthful. When that happens, jurisprudence deems the use acceptable, otherwise not. In the Adjudicator’s view, <www.citroen.co.za> does not meet this test”
The Adjudicator stated that “prima facie, a trade mark owner – at least, particularly a registered trade mark owner – ought to be able to register a domain name comprising his trade mark, and nothing but his trade mark. In the modern world of e-commerce, this is de rigeur. Why should a trade mark proprietor be held to ransom (metaphorically speaking) because he was not quick enough?”
The Adjudicator also mentioned that a trade mark owner should not be held to ransom where it has failed to secure its trade mark as a domain name, however this is a reality as most gTLDs and ccTLDs operate a “first come, first served” registration policy. The only solution is to make sure that your trade marks are secured as domain names at the first available opportunity.
Contact Lexsynergy (info@lexsynergy.com) for advice and assistance in securing your valuable trade mark as a domain name worldwide.
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