Sun International Wins the suncityvacation.co.za Domain Name
Since April 2007 a number of domain name disputes have been heard by the South African Institute of Intellectual Property Law ( SAIIPL). A recent decision shows that even if a domain name registration promotes the Complainant’s services, the Registrant still does not have the right to use the Complainant’s trade mark or to ride on the goodwill and reputation of the Complainant.
Sun International became aware that Blue Chip Accommodation CC ("Blue Chip") had registered the domain name suncityvacation.co.za. The website to be found at www.suncityvacation.co.za promoted Sun International’s Sun City Resort, featuring images of the resort and inviting bookings for it.
Sun International claimed that because the website made direct reference to Sun City, an impression was created of an association between Sun International and Blue Chip. The website also stated that all the images were "courtesy of" Sun International Limited, which was misleading and without any authorization. Sun International claimed that Blue Chip’s intention was to ride on Sun International’s goodwill and reputation to attract business.
In response, Blue Chip alleged that the domain name suncityvacation.co.za did not "use" the SUN CITY trade mark because the domain name was simply describing the services offered through the website - accommodation options at Sun City. This, they said, benefitted Sun International directly. Blue Chip also contended that it has always responded timeously to queries, provided a good service to clients and assisted Sun City with many bookings.
The Complainant, Sun International (South Africa) Limited ("Sun International"), is the proprietor of approximately eighty trade marks incorporating the phrase "SUN CITY" dating as far back as the late 1970’s. The Sun City Resort has for a very long time been one of South Africa’s top tourist attractions and is extremely well known in South Africa. The resort offers accommodation, sporting and recreational activities and is considered to be a world class destination.
After considering the evidence, the Adjudicator made the following ruling:
Sun International had proven that it had sufficient rights in the SUN CITY mark to found the complaint.
The domain name suncityvacation.co.za was indeed similar to Sun International’s SUN CITY trade mark as the addition of the descriptive word "vacation" did not set it apart from the SUN CITY brand.
The use of the domain name suncityvacation.co.za was not generic or descriptive but rather use of the SUN CITY name as a trade mark. The use of a domain name in the face of a well known and registered trade mark such as SUN CITY would inevitably lead the public into believing that the Registrant was associated with the Complainant. It is unfair to take advantage of the reputation of another, built up over a long period, without contributing in any significant way to that reputation, irrespective of the motives of the Registrant.
It is clear that it is not a defence to claim that the use of the domain name will benefit the Complainant. The Complainant has no control over the website and its contents. An abusive registration begins with the registration of a domain name itself and the content of the website has no bearing on the issue. The Adjudicator ruled that the registration was abusive and ordered that the domain name be transferred to the Complainant.