If you are a relatively social Capetonian, there is a good chance that you have heard of Marina Nestel and her events management, hosting and public relations company – Marina’s Little Black Book, or The Little Black Book as it is often referred to.
Aptly named from Nestel’s accumulated list of celebrities and socialites, The Little Black Book is responsible for organising some of the most exclusive events in the Cape, including The L’Ormarins Queens Plate (2008-2010); parties for Sol Kerzner, Robbie Fleck, Bob Skinstad; and events for the IPL, Tracy McGregor, Fabiani and Ogivly to mention a few.
Like any successful company these days, The Little Black Book’s website is one of its most valuable tools it employs for advertising its services and communicating with its clients. Recently though, its domain name, thelittleblackbook.co.za, came under fire from media giant Avusa Limited, who lodged a complaint against the domain name alleging that it was abusive, in view of the fact that it was similar to the THE LITTLE BLACK BOOK trade mark registered in the name of one of Avusa’s subsidiaries, as well as the domain name littleblackbook.co.za, of which Avusa is the registrant. Avusa is using the trade mark in respect of a publication.
Represented by attorneys Cliffe Dekker Hofmeyr Inc, The Little Black Book responded to Avusa’s complaint denying that there was any chance of deception and/or confusion regarding the identity of The Little Black Book; its services and the services provided by Avusa and refuting Avusa’s allegations that it was not making bona fide use of the Domain Name.
According to John Foster, a candidate attorney in Cliffe Dekker Hofmeyr’s Intellectual Property Department, the regulations that govern domain name disputes provide that, in order to succeed with a complaint, the complainant must prove (a) that it has rights in relation to a name or trade mark; (b) that is identical or similar to the domain name complained of; and (c) that the domain name in the hands of the registrant is abusive.
The Adjudicator appointed to hear this matter, disagreed with Avusa’s allegations and dismissed the complaint finding inter alia that, while Avusa might have rights in relation to the trade mark in respect of a publication, The Little Black Book’s use of the domain name is not abusive.
Eben van Wyk, national practice head of Cliffe Dekker Hofmeyr’s Intellectual Property Department, explains how, for a domain name to be classified as an ‘abusive registration’ it must have been registered, otherwise acquired and/or used in a manner that takes unfair advantage of, or is unfairly detrimental to, the complainant’s rights.
“Unfortunately for Avusa, it was clear from the most cursory analysis of the facts that there is no competition between it and The Little Black Book and therefore no likelihood that it would suffer loss if The Little Black Book is allowed to continue in its use of the domain name – something which it has done for years.”
Nestel was both delighted and relieved by the Adjudicator’s decision. “We’re very excited to get back to building our business, which had to take a bit of a backseat lately due to the uncertainty created by these proceedings. Thank you to Cliffe Dekker Hofmeyr Inc, as well as Corporate Law Alliance, for their guidance and assistance in this matter and to all of our client’s for their support and encouragement through this time. Not to mention the flood of testimonials submitted in our defense from people like Olympic gold medalist Ryk Neethling, former Springbok coach Harry Viljoen, publisher for Leadership Magazine Robbie Stammers and CEO of Land Equity Stuart Chait to name but a few!”
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