The New Zealand government has lost its battle to gain control of the domain name newzealand.com from US company Virtual Countries, which is also the registered owner of southafrica.com and several other countries.
Internet and e-commerce attorney Reinhardt Buys has warned that this is a serious setback to SA`s attempts to gain control of the southafrica.com domain name.
Buys says Virtual Countries registered the countries` domain names in 1995, way before most governments realised the value of the Internet and e-marketing.
"During August 2002 the SA government and SATOUR won an appeal in a New York court. The court ruled that the South African government or SATOUR may institute arbitration or court proceedings anywhere in the world against the registration of the domain name southafrica.com by Virtual Countries."
The litigation started in October 2000 when the government stated its intention to force Virtual Countries into World Intellectual Property Organisation (WIPO) arbitration proceedings and to seek the transfer of southafrica.com to SATOUR. Virtual Countries appealed against the initial ruling that was in favour of SATOUR.
WIPO, based in Geneva, administers international domain name dispute arbitration proceedings.
"The New York ruling only gave SATOUR the right to proceed with a case that was doomed from the start," says Buys. SATOUR has won the first battle in a war it is sure to lose."
On Friday WIPO ruled against New Zealand and refused to transfer the domain name to the New Zealand government. The arbitration panellists agreed that the word "New Zealand" was not a trademark or service mark that belonged to the New Zealand government. They said indications of geographical origin were not of themselves trademarks or service marks, which identified a specific trader or source of goods or services.
Buys says this ruling follows similar rulings on geographic indicators, such as brisbane.com and helsinkiharbour.com. However, in the barcelona.com case, WIPO ordered the transfer of the domain name in question because the City of Barcelona registered the name as a trademark during the 1992 Olympic Games.
"The newzealand.com ruling is bad news for South Africa - it would be impossible to prove that the words "South Africa" are a trademark that belongs to the South African government or SATOUR," says Buys. "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".
He says the newzealand.com ruling implies that it would be very difficult, if not impossible, to effect the transfer of other South African geographical domain names in the hands of foreigners.
Examples of these include joburg.com, registered by Twocows in the US; kalahari.com, registered by Vertical Axis in Hong Kong; pretoria.com, registered by Sharaj in the United Arab Emirates; johannesburg.com, registered by an individual, John Black from Canada; durban.com, registered by Global Link in Hong Kong; and capetown.com, registered by a software company in Canada.
The domain name nelsonmandela.com is registered by World Networks Online from Sydney, Australia. WIPO has stated in previous rulings that individuals can force registrants to transfer domain names that reflect the name of the individual.
Buys says the domain names of many towns, suburbs, rivers, parks and other geographic areas in South Africa are still available for registration. "In view of the newzealand.com ruling, the authorities of those areas will be well advised to register the domain names as a matter of urgency."
WIPO arbitration does not apply to .co.za domain names. In terms of the Electronic Communications and Transactions Act, an alternative dispute resolution system for local domain names will be set up shortly by the Department of Communications.
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