People parking domain names similar to existing trademarks or copyright names must be careful not to cause an infringement of rights of third parties.

What is Domain Parking?

Domain Parking is simply a service – predominately to earn money – whereby the domain name is registered without the intention of associating the name to any websites and/or email address. Sedo.com is a very well known domain parking service. Once the domain is registered for parking, it links to keywords and phrases as determined by the parking company, the domain registrant or the automated keyword spidering softwares. The payment rate is determined on the discretion of the parking company and payments are often based on number of visits and click ratio on the keywords.

How does domain Parking infringe trademark rights?

Registrants intending to park domain names that are identical or materially similar to other domain names must be careful not to infringe rights of third parties.

Recently SAIIPL, South African Institute of Intellectual Property Law, was involved in resolving a dispute between Mxit Lifestyle (Pty) Ltd and Andre Steyn on the trademark name, MXIT.

The original registrar of mxit.co.za and mxit.com, who operate chatrooms online, had applied for the registration of the trade mark MXIT. Andre Steyn, nevertheless, registered the domain name “mixit.co.za”, therefore, this becoming the disputed domain name. Andre Steyn parked the disputed name in an advertising revenue services website and associated it with keywords which had direct relationship with Mxit Lifestyle (Pty) Ltd’s business operations i.e. “chat”, “mxit” and “mobile”. The point worth noting was that Andre Steyn started using the disputed names only after Mxit Lifestyle gained a huge reputation and following on the online scene.

Andre Steyn objected to the use of the disputed domain name based on the fact that its domain was registered before the registration of the disputed name. On this point,  SAIIPL ruled that registering domain names with no intended use did not automatically qualify it as a trademark or copyright possession. SAIIPL found that, even though the disputed name was registered with no immoral intentions initially, using the disputed name to carry out activities that confused users on the use and association of the disputed name with  Mxit clearly was a violation.

This case is a learning ground for all domain name parkers: that any domains they intend to park should not be in violation with a already existing trademark or copyright name. Moreover, as in the case above, although the disputed name had no clear association with Mxit Lifestyle, the action of associating conflicting keywords while parking clearly flagged this as a domain name abuse.

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