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[2015] ZAWCHC 100
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Fairhaven Country Estate (Pty) Ltd v Harris and Another (735/2015) [2015] ZAWCHC 100; 2015 (5) SA 540 (WCC); [2015] 3 All SA 618 (WCC); 2015 BIP 506 (WCC) (8 July 2015)
REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
(WESTERN
CAPE DIVISION, CAPE TOWN)
CASE
NO: 735/2015
DATE:
08 JULY 2015
[
REPORTABLE
]
In
the matter between:
FAIRHAVEN
COUNTRY ESTATE (PTY)
LTD
....................................................................
Applicant
And
SHAUN
HARRIS
..........................................................................................................
First
Respondent
G
STUDIO BRANDING AGENCY (PTY) LTD
t/a
G STUDIO BRANDING AGENCY WESTERN
CAPE
..................................
Second
Respondent
JUDGMENT
DELIVERED
ON 8 JULY 2015
HENNEY,
J:
Introduction
and Background
[1]
The case is concerned with the ownership of and rights associated
with the use of a domain name
[1]
.
The
applicant is Fairhaven Country Estate (Pty) Limited which carries on
business as the developer of a residential estate known
as the
Fairhaven Country Estate which is located in Somerset West.
[2]
The first respondent is Shaun Harris, an estate agent who carries on
business as the sole member of Finman 119 CC trading as
Schonenberg
Real Estate (“Finman”) and who resides in Heldervue, Cape
Town.
[3]
In this application the applicant seeks an order against the first
respondent interdicting him from instructing the second respondent
or
in any way attempting to redirect or transfer the domain names
fairhavenestate.co.za, fairhaven.co.za,
fairhavencountryestate.co.za, fairhaven-country-estate.co.za and
fairhaven-estate.co.za
(“the domains”) to Fine
and Country or to any third party other than the applicant and
compelling him to take all steps
to ensure that registration of the
domain names is transferred to the applicant (the applicant tendering
the reasonable costs of
doing so).
Facts
Underpinning this application
[4]
On 28 July 2011 first respondent effected the registration of the
domain name “fairhavenestate.co.za” as well as
“redirect”
domains fairhaven.co.za. He also registered further domain names
under “Fairhaven” at a later
stage.
[5]
First Respondent states that he caused the said domain names to be
registered during 2011 “before the applicant appeared
on the
scene” and that at the time the Fairhaven Country Estate
development formed part of the Nedbank Limited distressed
property
portfolio. He claims that he registered the domain names because he
appreciated that possession of the exclusive right
to use the domain
names would assist him to obtain a mandate from Nedbank Limited (or
any successor-in-title) to market and sell
the properties forming
part of the development. The applicant thereafter purchased the
development from Nedbank Limited.
[6]
In or about the second half of 2012, Mr Otto Wiehahn, a businessman
and entrepreneur with a large portfolio of properties in
the Western
Cape, was approached by the father of the first respondent, David
Harris (“Harris”), who suggested to Wiehahn
that he
invest in a shelf company held by Harris which would be utilized to
acquire a failed development known as “Fairhaven”
in
Somerset West which had been rezoned for development purposes and in
respect of which certain (but not all) services had been
installed.
[7]
David Harris later interposed his son Shaun, the first respondent, to
deal with the matter.
[8]
Wiehahn was not amenable to injecting finance into an investment
vehicle owned by Harris and he accordingly utilized a shelf
entity
known as Proventus Three (Pty) Limited which purchased the
Fairhaven
property
in the second half of 2012. On purchasing the
property, this entity changed its name to that of the applicant,
Fairhaven
Country Estate (Pty) Limited. It is important to note
at this stage that neither first respondent nor his father, nor any
of their entities, have owned shares in applicant.
[9]
An arrangement was concluded between the applicant and Harris with
regard to the sales and marketing of the 205 unimproved plots
in the
development, which sales commenced in September 2012.
[10]
In order to put into place the arrangement in regard to the marketing
of the development, the applicant, in conjunction with
Harris,
acquired a special purpose vehicle to market the plots. The
name of this entity was changed to Summer Club Real Estate
(Pty)
Limited (“Summer Club”) with 50% of its shareholding
being held by Wiehahn’s management company, Proventus,
and the
balance held by a trust, whose trustees included first respondent.
[11]
Summer Club was granted sole mandate to sell plots on the estate and
it in turn granted a submandate to an entity known as
Finman 119 CC
(Finman), which close corporation was wholly owned and controlled by
the first respondent, in respect of the sale
of the undeveloped plots
on the Estate based on an agreed commission structure.
[12]
For reasons not relevant to this application, the mandate of Summer
Club was cancelled on 5 May 2014. Negotiations ensued
between
the applicant and Proventus on the one hand and Summer Club and
Finman on the other as to the financial implications of
the
cancellation of the mandate and on 22 May 2014, an agreement was
concluded with regard thereto. The terms of the agreement
were
implemented and all commercial relationships were terminated between
the entities that is the applicant and Proventus on the
one hand, and
the Avodah Trust (and its Trustees), and Finman on the other hand.
[13]
On 15 January 2015, the applicant’s sole director Zane De
Decker received an email from one, Jan Hofmeyr, a representative
of
the second respondent, G Studio Branding Agency (Pty) Ltd, wherein he
informed the applicant that they had received an email
from the first
respondent requesting the transfer of the domain
www.fairhavenestate.co.za
to the first respondent (which was registered and belongs to Shaun
Harris). In this email, the second respondent informed
the
applicant that this affected the marketing of Fairhaven Estate and
that it would need to act promptly to register a new domain
for all
the applicant’s marketing material to function. He
further informed the applicant that there was a 24 hour
window before
this would be active and it meant that all emails as well as the
website would be down. This was the first
time that the
applicant became aware of the fact that the first respondent
registered the domain name on his name.
[14]
This prompted the applicant to seek legal advice. A letter was
addressed to the first respondent, wherein the applicant
states that
after the relationship between it and the first respondent and the
entities he represented (had come to an end, the
applicant’s
existing website, under the domain of
www.fairhavenestate.co.za
continued to operate, being conducted and maintained through the
applicant’s duly appointed marketing agent Jan-Hofmeyr trading
as “G-Studio”. The applicant further informed the
first respondent that the domain constitutes the vehicle from
which
all marketing in respect of Fairhaven Estate is conducted and through
which all email traffic (both send and received) relating
to
marketing of the Estate is channelled.
[15]
It is also common cause that while first respondent paid the initial
registration fee, the applicant paid the costs for the
development
and renewal of the domain and the upgrade and operation of the
website connected to such domain.
[16]
It is common cause that the said domain names were registered before
the applicant was registered as a company. It was registered
at the
time when the Fairhaven Country Estate development formed part of the
Nedbank Limited distressed property portfolio.
[17]
It is also common cause that at the time when the business
relationship between the applicant and the first respondent came
to
an end, the first respondent had never informed the applicant that
the domain names were registered in his name. The first
respondent contends that there was no need for him to inform the
applicant that the domains belonged to him.
[18]
It also emerged and it is common cause that the first respondent’s
sister is in the employment of a real estate company,
Fine and
Country. The first respondent admits that he requires the
re-direction
[2]
of the active
domain Fairhavenestate.co.za to use it in the performance of resale
mandates in terms of which he had to sell existing
properties that
were up for sale in the Fairhaven Estate. He holds such resale
mandates with an aggregate market value of
approximately R23 million
and according to him the importance and value of the domain name to
him is self- evident. It is
common cause that on 28 July 2011
the first respondent registered two internet domain names (“domain
names”) in his
name in relation to Fairhaven Estate, namely,
Fairhavenestate.co.za (“active domain”) and
Fairhaven.co.za. And on 2
November 2011 Fairhavencountryestate.co.za
was registered. On 27 June 2014 Fairhaven-country-estate.co.za
as well as Fairhaven-estate.co.za
were also registered.
THE
APPLICANT’S CASE
[19]
The applicant contends that it had maintained and operated the active
domain (Fairhavenestate.co.za) as well as paid the costs
associated
therewith it conducted its marketing website and through such domain,
channelled all the email traffic (both sent and
received) relating to
the marketing of the estate (Fairhaven). And he further argued that
even though the first respondent is the
registrant, he is not the
owner of such domain. The applicant in respect of such
submission relies on the Wikipedia website
definition of owner of a
domain. The relevant quote reads “
often, this
transaction is termed a sale or lease of the domain name, and the
registrant may sometimes be called “owner
”,
but no
such legal relationship is actually associated with the transaction,
only the exclusive right to use the domain name.
More
correctly, authorised users are known as “registrants” or
as “domain holders”
.
[20]
The applicant contends that had it known from the outset that the
first respondent was the registrant of the domains and would
seek to
exploit them in due course, it could have renamed the estate at the
very beginning before investing so much into the brand,
or could have
insisted that the first respondent cede away the right to the domain
names which he may have had, before entering
into a profit sharing
agreement with the first respondent.
[21]
The applicant has to date spent R1,75 million on direct advertising
(all of which includes the domain) and currently spends
an average of
R50 000,00 per month on promoting its brand, while the total
amount spent on the Fairhaven project as a whole
is in the region of
R70 million rand. The applicant argued that the suggestion by
the first respondent that the domains were
used by the applicant with
his consent cannot be accepted because the applicant never sought his
consent nor was any such consent
granted. The applicant
contends that this was for the simple reason that the applicant did
not consider first respondent
or any person other than it to have any
right to the use of the domains and, in particular, the active
domain. The applicant
did not know that the first respondent
was the registrant of the relevant domain names and was never
informed of this fact.
Other than the nominal costs of
registering the domain, which the first respondent never sought at
any stage from the applicant,
all the costs pertaining to the renewal
of the domain and the hosting costs in this regard were paid by the
applicant. The applicant
would not have done this had the first
respondent asserted his claims to the domains concerned during the
existence of their relationship.
[22]
The applicant further submitted that the first respondent, in not
asserting any claim to the domains and allowing the appellant
to use
and to pay for the domains and the website which operated therefrom,
waived any claims to the domain names in favour of
the applicant.
[23]
The applicant further argued that should the active domain be
transferred to the first respondent, he would have full access
to all
the emails on the domain and any future emails addressed to such
domain. This would leave the applicant in a position
where it
would have no access to or control over such emails and it would have
no way of knowing of their existence.
[24]
The applicant contends that the active domain is part and parcel of
the applicant’s “get up and promotional material”
which it developed over the past 3 years at great expense.
According to the applicant it appears on every billboard, leaflet
and
every document associated with it and it is on its website. It
is part and parcel of the identity of Fairhaven Estate
and part of
the “DNA” of the brand and is synonymous with its
identity. The applicant argues that the first respondent’s
contention that he requires the domain name to assist it in the
performance of resale mandates confirms that clients who would
seek
contact with the applicant through its website will as a result of
this be redirected without their knowledge to a rival agency.
This will result in the applicant being deprived of its customers and
it would instead put the first respondent in contact with
the very
customers who would be seeking to do business with the applicant
through its website. According to the applicant,
this would in
the circumstances amount to unlawful competition.
[25]
The applicant therefore argues that it has satisfied the requirements
for final relief in the form of an interdict in the following
respects:
1.
It has established that it has a clear right (being the right to
prevent what amounts to unlawful competition on the part of
the first
respondent.
2.
An injury had actually been committed or reasonably apprehended
(being the loss to the applicant of its goodwill and business
to the
unjustified benefit of the first respondent).
3.
There is an absence of any satisfactory alternative remedy available
to the applicant (especially in the light of the fact that
the mere
establishment of another domain will not assist the applicant, but
rather contribute to and consolidate its prejudice).
[26]
THE RESPONDENTS’ CASE
The
first respondent argued that all the domain names were registered in
his name on the “WHOIS”
[3]
protocol on the dates as mentioned earlier. He further paid for
such registration. He contends that he as registrant
of a
domain is the “owner” thereof and enjoys the rights of
exclusive use thereof. The applicant in the light
of these
facts cannot claim to have established any right to interdict him
from causing his own domain name to be transferred and
redirected to
another website of his choice or to a third party and to prevent him
from registering further domain names.
The applicant cannot
also compel him to cause his (First Respondent’s) domain names
to be registered in the applicant’s
name as being owned by the
applicant on the basis that it (the applicant) has a right to protect
the goodwill and work embodied
in the website which operates from the
domain and to prevent the first respondent from having access to its
intellectual capital.
[27]
The respondent argues the difficulty that faces the appellant is that
he (First Respondent) is the owner of the domain names
or at the very
least, the holder of the exclusive rights thereto. According to
the first respondent, the domain names form
part of his estate or
patrimony. The first respondent argues that his right trumps
the applicant’s rights in and to
its goodwill, intellectual
property, website and emails that it may have which he has no
interest in. According to him these
rights of the applicant
cannot in law justify the effective expropriation of his (First
Respondent’s) property in favour
of the applicant. This
is what the applicant is effectively seeking in his Notice of
Motion. This is a violation of
his right of property in terms
of sec 25 of the Constitution Act 108 of 1996.
[28]
The other difficulty the first respondent has with the applicant’s
case is that the applicant does not own the name “Fairhaven”
or otherwise enjoy any right to the exclusive use or protection
thereof (in the form of copyright or a registered trademark).
The applicant accordingly, has no right to demand that the first
respondent (or any other person) should refrain from using the
name
“Fairhaven” or from registering it as a domain name in
conjunction with the other words.
[29]
The applicant according to the respondents cannot seek interdictory
relief to protect its goodwill and work product embodied
in the
website, because such interdictory relief cannot prevent the first
respondent or any party from accessing its website or
emails or any
other aspect of its own work and productivity. The applicant in
this case cannot seek such protection because
there is no danger that
the first respondent who has no interest therein, will attempt to
access it. According to the first
respondent, the applicant
under the guise of an attempt to protect its goodwill, is attempting
to assert rights to an unregistered
name to which it enjoys no
exclusivity whatsoever.
[30]
The first respondent further holds that the further argument of the
applicant, that the first respondent somehow concealed
the fact that
the domain names are registered in his names lacks any merit, because
the first respondent has been the registrant
of the domain names on
the WHOIS protocol (which is a public registry) throughout.
Furthermore, it is also clear that the
second respondent throughout
acted as the applicant’s agent. The first respondent
therefore contends that he never,
whether by words or conduct,
indicated that he waived or abandoned his rights as registrant of the
domain names in favour of the
applicant. The assertion therefore of
the applicant that the first respondent has waived or abandoned his
rights in favour of the
applicant or should be estopped from denying
that he did so falls to be dismissed.
[31]
According to the first respondent, the applicant still has an option
to register a new domain name for itself (which also contains
the
word “Fairhaven”) in any combination with any other
words, except that he may not register the specific combinations
registered by the first respondent.
[32]
ISSUES FOR CONSIDERATION
The
following issues stand to be considered:
1)
Whether the applicant has an exclusive right to use the domain
fairhavenestate.co.za (active domain) and other domain names which
may exist in the name of or pertaining to Fairhaven Country Estate or
domain names containing the name “Fairhaven”.
2)
And if so, whether the respondents use or intended use thereof, may
result in passing off.
[33]
EVALUATION
The
Interdictory Relief that the applicant is seeking is based on the
fact that the respondent would by claiming the domain names
for his
exclusive use, commit the delict of passing off. It would
therefore be useful to once again look at what a party
needs to show
to be successful in a claim of passing off. In “
Century
City Property Owners' Association v Century City Apartments Property
Service CC
2008 JDR 1420 (C) it was held “
Thus, in order
to succeed in a passing-off action based upon an implied
representation it is generally incumbent upon the Plaintiff
to
establish, inter alia: firstly, that the name, get-up or mark used by
him has become distinctive of his goods or services, in
the sense
that the public associate the name, get-up or mark with the goods or
services marketed by him (this is often referred
to as the
acquisition of reputation); and, secondly, that the name, get-up or
mark used by the Defendant is such or is so used
as to cause the
public to be confused or deceived in the matter described above.
These principles are trite and require no citation
of authority".
Further,
in
Pioneer Foods (Pty) Limited v Bothaville Milling (Pty) Limited
2014 JDR 0477
(SCA) it was held:
“
[7] There
is no dispute over the relevant legal principles. Passing off occurs
when A represents, whether or not deliberately or
intentionally, that
its business, goods or services are those of B or are associated
therewith. It is established when there is
a reasonable likelihood
that members of the public in the marketplace looking for that type
of business, goods or services may
be confused into believing that
the business, goods or services of A are those of B or are associated
with those of B. The misrepresentation
on which it depends involves
deception of the public in regard to trade source or business
connection and enables the offender
to trade upon and benefit from
the reputation of its competitor. Misrepresentations of this kind can
be committed only in relation
to a business that has established a
reputation for itself or the goods and services it supplies in the
market and thereby infringe
upon the reputational element of the
goodwill of that business. Accordingly proof of passing off requires
proof of reputation,
misrepresentation and damage. The latter two
tend to go hand in hand, in that, if there is a likelihood of
confusion or deception,
there is usually a likelihood of damage
flowing from that.”
It
is clear that on 28 July 2011 when the first respondent registered
the domain name “fairhavenestate.co.za” as well
as
“redirect” domains in the names of fairhaven.co.za and
fairhavencountryestate.co.za the applicant as an entity was
not in
existence. The registration of the above domain names was aimed
at assisting the first respondent in acquiring a mandate
to market
and sell the properties situated in Fairhaven Country Estate.
The registration of the domain names was therefore
directly linked to
the name of the estate or the property which belonged to Nedbank at
that stage, namely, the Fairhaven Country
Estate Development.
[34]
The name was therefore not inextricably linked to the first
respondent but to the property belonging to another party.
It
was not something that was or in any way connected to the first
respondent. On the first respondent’s own version,
the
purpose of the registering of the domain names was to assist it
marketing and selling properties on behalf of either Nedbank
or its
successor [’s] in title, currently the applicant. At the
time of registering it, the first respondent could
not attach any
value to the domain name. Only were he himself to acquire a
connection or link to the property whose name
was associated with the
domain names he registered, could he do so. The only connection
at the time between the first respondent
and the domain names was the
fact that he was the person responsible for the registration thereof.
[35]
It is irrelevant that the domain names were registered and acquired
by the first respondent before the applicant came into
existence.
Prior to its association with the applicant, quite simply, from the
perspective of the first respondent, such
domain names could hold no
value. At such time, these domain names would not have linked
any person with Fairhaven Estate.
It was only after the
applicant came into existence and after it gave the first respondent
the mandate to market and sell its properties,
that value became
attached to the domain names. Yet such value attached to the
applicant in that the domain names formed
part and parcel of the
applicant’s get up and promotional material.
[36]
The first respondent also never during this time made the applicant
aware of the fact that he owned the domain names and that
they were
for his exclusive use. In fact he permitted the applicant to use the
active domain name for its (applicant’s) benefit.
During
this time the applicant spent an amount of R1,75 million as direct
advertising and an average of R50 000,00 per month
on promoting
its brand. The applicant alone spent a total of R70 million on
marketing and selling properties on the Fairhaven
Estate. The active
domain name is part and parcel of the applicant’s get up and
promotional material which it has developed
over a period of 3
years. The active domain name appears on every bill board,
every leaflet and every document as commissioned
by it and its
website. It is part and parcel of the identity and goodwill of
Fairhaven Estate. The domain name acquired
value thanks only
through its association with and due to the efforts of the
applicant. Such value clearly fell to the applicant;
as far as
the outside world is concerned, such domain names are linked to the
applicant.
[37]
The applicant in my view clearly established an inextricable link
between the domain names and its name, even though the first
respondent was responsible for the registration thereof. I do
not agree with the first respondent’s claims that as
the owner
of the domain names he has the exclusive rights of use thereto and
that the applicant’s rights in and to its goodwill,
and
intellectual property cannot trump his proprietary right in this
domain name. It is my view that the mere registration
of the
domain name that was linked to the property which belonged to someone
else, cannot result in having exclusive right to the
use of that
domain name.
[38]
The first respondent took the step of registering the domain names
because he felt that owning them would facilitate his obtaining
mandates from Nedbank Limited or its successors in title to market
and sell properties forming part of the Fairhaven development.
It was however never his intention, and this is borne out by his
subsequent conduct [as set out in the previous paragraphs], that
such
domain names would be attached to his own name or his own business,
or be used for marketing his own business or services;
such domain
names would always be used by the owner of the development, and would
be exclusively for their benefit. And it
is my view that by his
conduct he abandoned any right to the exclusive use of the domain
names. In the above respects, it
is irrelevant that the domain
names were registered in the name of the first respondent.
[39]
The first respondent raises the issue that the applicant does not own
the name Fairhaven or otherwise enjoy any exclusive use
or protection
thereof in the form of copyright or a registered trademark.
However, it is well-established in law that the
owner of an
unregistered trade-mark is entitled to enforce it with a passing off
action if the requirements for passing off have
been met. This
position was confirmed by
Harms DP
in the matter of
Turbek
Trading CC v A and D Spitz and Another
[2010] 2 All SA 284
SCA
at
para 11
:
“
I
have already explained that the purpose of the provisio
[4]
is to confirm that the Act did not abolish the principles of
passing-off, meaning in context that the owner of a common-law
or
unregistered trade mark is entitled to enforce it with a passing-off
action.”
[40]
It must also be noted that there is support for the view that the
adoption of a domain name may amount to passing off.
Webster
and Page; South African Law of Trademarks, Unlawful Competition,
Company Names and Trading Styles 4ed at 15.26.17 says:
“
It
is conceivable that a competitor could engage in passing off by
adopting as a domain name, a mark of another which enjoys a
reputation. It has been held that the placing on the internet
register of a distinctive name made a representation to persons
who
consulted the register that the registrant was connected or
associated with the name registered and thus the owner of the
goodwill in the name. The registration of such a distinctive
name as a domain name was an erosion of the exclusive goodwill
in the
name which damaged or which was likely to damage the owner of the
goodwill.”
See
also
Telestream Communications (Pty) Ltd v Halo Mobile (Pty) Ltd
2013 JDR 1647( GSJ)
where at para [15] it was held:
[15] A
further and central point in this matter concerns passing off in
respect of domain names. There is little
doubt in my view that the
similarity of domain names
may result
in passing
off, and the normal principles should apply.
It has already
been held that the mere registration of a domain name of a well-known
company was an actionable passing off
.”
(emphasis
added)
This
position has also been confirmed in other jurisdictions. See
the case of
British
Telecommunications Plc v One in a Million
[1999] FSR 1
and
Global
Projects Management Ltd v Citigroup Inc & Ors
[2005] EWHC 2663
(Ch) (17 October 2005)
with
regards to the position in England;
CSR
Limited v Resource Capital Australia Pty Limited
[2003] FCA 279
with
regards to the position in Australia. Careful consideration
should however be given to the basis on which it was found
in these
cases that passing off had been proven or shown to exist
[5]
.
[41]
I am also not convinced by the argument that the applicant can quite
easily register a new domain name for itself which also
contains the
word “Fairhaven” in any combination with other words it
pleases, save the specific combinations registered
by the first
respondent, for the following reasons:
41.1
It is difficult to understand how the possible use by the applicant,
as a domain name, of the words, “Fairhaven”
together in
any combination with any other words addresses the accusation that
the first respondents’ use of the domain names
in dispute would
link or associate the first respondent with the applicant.
41.2
Secondly, it is the first respondent’s intention to compete
with the applicant to sell and market properties within that
same
estate and to use the domain names exclusively for that purpose.
In such a situation, it would not be difficult for
any ordinary
person to confuse the business of the first respondent with that of
the applicant, if the first respondent were to
be permitted to use
the domains that were once used by the applicant or domain names
associated with the applicant.
[42]
HAS THE APPLICANT MET THE REQUIREMENTS FOR FINAL RELIEF
In
this particular case although the first respondent intends to use the
domain names, he has not as yet made any representation
that the
domain name of the applicant is his or that the domain name is
associated with his business. Although in my view
the other
elements of passing off has been proven in that the name, Fairhaven,
has become distinctive of the goods and services
of the applicant and
that the public would associate the domains that the first respondent
intends using with that of the applicant.
[43]
The applicant has also shown that its business has goodwill which is
associated with the name Fairhaven and that its reputation
would in
all likelihood be damaged should the first respondent be allowed to
continue to use such domain.
[44]
In my view, however, in this case, while there has been no
representation or misrepresentation as yet by the first respondent,
there is a clear intention that he intends passing off his business
as being that of the applicant. The applicant therefore is
entitled
to interdictory relief in that there is a threatened infringement of
the applicant’s clear right where it need not
wait for the
actual infringement to occur. It is therefore entitled to approach
the court to restrain the threatened conduct
[6]
.
I am satisfied that the applicant has satisfied the requirements for
such relief. Firstly, the applicant has established that
it has a
clear right to the protection of its goodwill and reputation of which
the name, Fairhaven form part.
[45]
Secondly, it is clear that the first respondent intends to use the
domain name in direct competition with the applicant, to
sell and
market properties within the same estate in which the applicant
operates. There is clear evidence that the harm
the applicant
seeks to prevent is reasonably apprehended.
[46]
Lastly, I am satisfied that the applicant has no other adequate
remedy other than to avail itself of the assistance of this
court to
protect itself against the first respondent.
[47]
In the result therefore, I make the following order:
1)
That the first respondent is interdicted from instructing the second
respondent or in any way to attempt to redirect or transfer
the
domain names
fairhavenestate.co.za, fairhaven.co.za,
fairhavencountryestate.co.za
,
fairhaven-country-estate.co.za
and fairhaven-estate.co.za
to Fine and Country or to any
third party other than the applicant.
2)
That the second respondent is compelled to take all reasonable steps
to ensure that the registration of the domain names mentioned
above
is transferred to the applicant for which the applicant will pay the
reasonable costs of doing so.
3)
That the first respondent is interdicted from registering or
attempting to register any further domains containing the name
“Fairhaven” in future.
4)
That the first respondent is ordered to pay the costs of this
application.
HENNEY,
J
Judge
of the High Court
[1]
Each computer connected to the internet has an Internet Protocol
(IP) address in the form of a unique number. Through this
number computers locate other computers. We as human beings
rather prefer to use names rather than numbers to find computer
sites on the internet. The “Domain Name System (DNS)”
effectively serves as an electronic “phone book”
by
translating domain names (for example,
www.google.com
)
into IP addresses. The Domain Name System makes it possible
for computer users to enter www and e-mail addresses linked
to
particular pages and persons they seek into their internet browsers
and emails without having to know on which particular
computer the
page or person is hosted. A domain name constitutes of one or
more parts that are separated by dots, such
as
www.google.com
.
[2]
Re-directed from the Fairhaven IP address to the First Applicant.
[3]
This
is an Internet service that finds information about a domain name or
IP address. If you enter a domain name in a WHOIS search
engine, it
will scour a huge database of domains and return information about
the one you entered. This information typically
contains the name,
address, and phone number of the administrative, billing, and
technical contacts of the domain name. WHOIS
can also be used to
simply check if a certain domain name is available or if it has
already been registered. Definition as per
techterms.com
.
[4]
With reference to the Trade Marks Act; Act 194 of 1993.
[5]
On the basis of the so-called “Extended Passing Off”.
See “Saunders, Katharine – “Choccosuisee
–
The New ‘Extended Extended’ Passing Off” [2001]
VUWLawRw 13; (2001) 32(1) Victoria University of Wellington
Law
Review 351; See also the discussion of Webster (supra) at 15.6 under
the heading South African and English Law compared;
and Lorimar
Productions Inc v Sterling Manufacturers (Pty) Ltd 1981 3 SA 1129
(T).
[6]
See
Herbstein
and Van Winsen 5ed Vol 2 – Civil Practice of the High Court of
South Africa
at
1465
.
See also
Telestream
Communications Pty (Ltd) v Halo Mobile Pty (Ltd)
supra
;
See
Amlers
Precedents of Pleadings 7ed Edition at page 314
.