South African Telkom’s attempt to get back the phonebook.co.za and whitepages.co.za domain names have been refused in terms of the .za ADR regulations.
The Complainants (Telekom) argued they have made extensive use of THE PHONE BOOK trade mark for many years in South Africa and these directories are commonly known as THE WHITE PAGES. As a result, Telekom argued they enjoy, in addition to the statutory rights, substantial common law rights in the trade marks THE PHONE BOOK and THE WHITE PAGES.
As part of the complaint by Telekom, they argued phonebook.co.za did not resolve to an active website while whitepages.co.za eventually did, it did not when the initial complaint was made. Other issues were the Registrant’s conduct amounts to an unfair disruption of the business of Telekom and the registrant provided incomplete or incorrect Whois information.
In response, the registrantÃ¢â¬â¢s (The Internet Corporation) claim included a number of issues, including
- ADR Regulations and its proceedings are only applicable to domain names registered after the promulgation of the Regulations
- in the case of phonebook.co.za, includes generic terms Ã¢â¬ÅphoneÃ¢â¬Â and Ã¢â¬ÅbookÃ¢â¬Â
- the disputed domain names are not identical or similar to a name or mark in which Telekom has rights
- the domain names registered are not abusive registrations.
To read further on this dispute, there is a 20+ page decision available at zadna.org.za/documents/Decision_ZA2007_0005.pdf