SUBJECT: RESPONSE TO OBJECTION TO THE REGISTRATION OF THE FUCKSENTECH.CO.ZA INTERNET DOMAIN NAME AND ALLEGED PASSING-OFF AND UNLAWFUL COMPETITION THEREOF BY SHAUN DEWBERRY
I make reference to your letter of demand dated 29 June 2004. While I acknowledge the existence and reputation of the SENTECH mark within the borders of South Africa, and acknowledge the exclusive right to commercial usage thereof by Sentech, I find flaw in the allegations of trademark infringement, passing off and unlawful competition that have been levelled against me in the registration and use of the FUCKSENTECH.CO.ZA domain.
The allegations fell within the following three actions:
1.Passing-off in terms of South African Common Law:
The use of the word ‘FUCK’ in FUCKSENTECH.CO.ZA removes any confusion that could lead the public to believe the site is passing-off as SENTECH.CO.ZA. By definition, the phrase ‘FUCK SENTECH’ dissociates itself completely from any potential endorsement or representation or association with the SENTECH trademark.
As a public institution, Sentech is open to praise and criticism about its operations and actions. Fair comment on public interest is an essential component of the the right to freedom of expression, and enjoys judicial protection as long as it is honest and relevant, no matter how prejudiced or exaggerated it may be (Innes CJ in the case of Crawford v Albu (1917), cited in Stuarts et al. The Newspaperman’s Guide to the Law, 65). Such fair comment, enjoying the protection of section 16 of the constitution (Act 108 of 1996), cannot be held as an erosion of goodwill in a trade mark.
2.Trade mark infringement:
Registration of the FUCKSENTECH.CO.ZA domain cannot amount to trademark infringement in that section 34(1) of the Trade Marks Act (194 of 1993) can only apply ‘in the course of trade’, as it states, where an individual makes the unauthorized use of a trademark so as to deceive or cause confusion, and for pecuniary benefit. My use of the above domain is entirely without commercial motivation with no potential for monetary benefit.
Considering that the use of the FUCKSENTECH.CO.ZA domain is entirely non-commercial in nature, and that as an individual I am not in the business of signal distribution or telecommunications or providing services in any area of Sentech’s commercial interest, I am not a competitor to Sentech and therefore cannot be regarded as interfering with their ‘right to attract custom’, a key factor in any consideration of unlawful competition.
Further examples of the use of trade marks in domain names that criticise the corporate entities holding those trade marks exist worldwide. Although many of these examples lie in the jurisdiction of United States law, a legal system less relevant than Dutch or English law when considering international precedent influencing South African law, it can be held true that the United States of America still holds the most progressive Internet related legislation and the highest level of experience in the judicial area and therefore much weight can be attributed to decisions that have been upheld in those courts. Amexsux.com, fuckgeneralmotors.com, fordreallysucks.com, theshopsatwillow-bendsucks.com have all set precedent as non-infringing uses of trademarks in domain names.
With South Africa’s transition to democracy, the right to freedom of expression has received wide and much greater importance, and is constitutionally protected in the country’s Bill of Rights. The fundamental essence of the right to freedom of expression is widely acknowledged and given cognisance in every democratic society.
I hope your client will acknowledge the fact that robust and adverse criticism is the price which this society has to pay in order to enjoy the hard won right to freedom of expression.
While this may not be the outcome you were expecting, I trust you can understand my position in this matter. Should I receive no further correspondence within in ten days, I will presume that you and your client have chosen to drop the issue.