News / Legal Brief
Jun 6,2018
WIPO has ordered the transfer of the top-level domain name capitec.com to Capitec Bank Limited (“Capitec”).
This ruling is pursuant to a complaint lodged with WIPO on behalf of Capitec. The domain name complaint process for top-level domains is governed by the uniform dispute resolution policy (“UDRP”) adopted by the internet corporation for assigned names and numbers (“ICANN”).
Capitec, established in South Africa on 01 March 2001, is the world’s best bank according to the Lafferty Bank Quality Ratings. Capitec’s first trade mark applications were filed in South Africa in August 2000 and Capitec is the registrant of over seventy six generic and country code domain names.
The disputed domain name, capitec.com, resolved to an active site, which at various times hosted links to categories or services relating to the banking services offered by Capitec. The landing page had a for sale banner offering to sell the domain for US$16 128.00.
The Respondent registered capitec.com recently due to the failure to renew capitec.com by the initial registrant, Capitec, Inc., California (unrelated to Capitec) who registered the domain name on 8 August 1999.
The date of original domain name registration preceded the establishment of Capitec and the filing of its trade marks, negating locus standi at that time.
In terms of the UDRP the Complainant must show that:
Managing domain name registrations is onerous and costly for brand owners with nearly two thousand top-level domain names now available for registration. Once the sunrise or priority period for trade mark owners to register a domain name has passed, domain name registration is granted on a first-come first-served basis.
It is imperative to register and maintain your trade marks as a brand owner and secure important domain names, albeit defensively.
Capitec’s continued success is a consequence of its extensive trade mark portfolio and repute.
If you would like to learn more about Intellectual Property please visit our practice area page.
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