Wipo is the body that arbitrates international domain name disputes. New Zealand and South Africa are involved in litigation against US-based Virtual Countries, which has registered 33 geographic names as internet addresses. In their ruling Wipo criticised the New Zealand government for abusing the arbitration process with a baseless claim. It said that the name of a country can be used to distinguish goods and services from that country, but could not be counted as a trademark.
"The newzealand.com ruling is bad news for SA it would be impossible to prove that the words South Africa are a trademark that belongs to the government," said internet law specialist Reinhardt Buys, adding that it would now also be more difficult for authorities to get control of other domain names registered by foreigners. Examples include joburg.com, owned by a US company; johannesburg.com, owned by a Canadian; durban.com, owned by a Hong Kong firm, and pretoria.com, owned by a company in the United Arab Emirates.
Andile Ngcaba, communications department director-general, says however that South Africa will continue to pursue its claim regardless of the New Zealand ruling, and that they still believe that they have a case.
This ruling follows similar rulings on geographic indicators, such as brisbane.com according to Internet and e-commerce attorney Reinhardt Buys. However, WIPO ordered the transfer of barcelona.com because the City of Barcelona registered the name as a trademark during the 1992 Olympic Games.
"The only way to protect a domain name, as an important asset in any business, is to register a corresponding trademark. Many businesses mistakenly conclude that a company name is enough to protect a domain name. It is not."
Buys says the domain names of many towns, suburbs, rivers, parks and other geographic areas in South Africa are still available for registration. "Authorities of those areas will be well advised to register the domain names as a matter of urgency."
Have you registered your company name and flagship product names as a domain names, both .co.za and .com? How about your clients?
For some interesting reading into the first ever country domain name dispute, visit WIPO for the final decision and arguments.
