Alternative routes for the NeverFlySAA.com Case

South African Airways' (SAA) tolerance for freedom of expression on the Internet has been challenged by a disgruntled passenger who created his own website, 'NeverFlySAA.com', to vent his anger about the airline's allegedly poor service.

SAA has threatened to have the website removed. However, the South African courts have yet to address the issue of protest sites, so perhaps the airline would be better off having the dispute settled under the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN).

If the airline decides to take the case to a national court, the first problem it will encounter is the court's jurisdiction to hear the case. The website and its owner are based in the United States, and it is unlikely a South African court would entertain a claim where the defendant has no presence in South Africa.

Even if the courts did have jurisdiction, SAA would struggle to found a cause of action based on defamation law or trademark infringement. Under South Africa's defamation law, the website owner would be able to raise the defence of fair comment, whereby every person has the right to express his/her opinion on matters of public interest, provided the comments are bona fide and based on fact. To establish a trademark infringement claim, SAA's mark would have to be used in the trade of goods or services, which it is not. Even a claim of trademark dilution would probably fail because the use of SAA's mark as part of the domain name is for noncommercial purposes.

The only realistic option SAA has is to file a complaint under ICANN's UDRP. To succeed, SAA would have to show:

• the domain name is identical or confusingly similar to its trademark;
  
  
• the domain name holder has no rights or legitimate interest in the name; and
  
  
• the domain name has been registered and is being used in bad faith.

Some panel members at the Arbitration and Mediation Centre of the World Intellectual Property Organization (which administers ICANN's UDRP) favour the proposition that such a domain name is confusingly similar to the trademark owner's mark. However, other panel members believe that adding a word to a trademark does not result in a name that is confusingly similar (see for example Panel divided on Vivendi Universal Case). While it is clear the 'NeverFlySAA.com' site is meant to criticize SAA, not infringe its mark, it remains to be seen how (and where) this dispute is ultimately resolved.

Pamela Stein, Cheadle Thompson & Haysom, Johannesberg