South African hotels and resorts group Sun International (SUI) has won the rights to an Internet domain name website using the trademark of one of its prime South African assets - Sun City.

This comes after it had brought a complaint before the South African Institute of Intellectual Property Law (SAIIPL).

This is the latest of a number of domain name disputes brought before the SAIIPL, the group said in a statement on Wednesday.

Sun International had become aware that Blue Chip Accommodation CC had registered the domain name suncityvacation.co.za, said Megan Reimers, a partner at Spoor and Fisher, a leading African intellectual property law firm.

"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," said Reimers. "Sun International is the proprietor of some 80 trademarks incorporating the phrase 'SUN CITY' dating as far back as the late 1970s."

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, she said.

"The website also stated that all the images were 'courtesy of' Sun International Limited, which was misleading and without any authorisation. Sun International claimed that Blue Chip's intention was to ride on Sun International's goodwill and reputation to attract business," said Reimers.

In response, Blue Chip alleged that the domain name suncityvacation.co.za did not "use" the SUN CITY trademark because the domain name was simply describing the services offered through the website, accommodation options at Sun City. This, Blue Chip said, benefited Sun International directly.

Blue Chip also contended that it had always responded timeously to queries, provided a good
service to clients and assisted Sun City with many bookings.

After considering the evidence, the SAIIPL adjudicator ruled that Sun International had proven that it had sufficient rights in the SUN CITY mark to found the complaint.

SAIIPL also ruled that the domain name suncityvacation.co.za was indeed similar to Sun International's SUN CITY trademark 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 trademark.

The use of a domain name in the face of a well-known and registered trademark 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, SAIIPL ruled.

Source: I-Net Bridge