Geographic domain names to remain unchallenged

International

The World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Geographical Indications and Industrial Designs has determined that the protection of geographic domain names should not be retrospective, making it more likely that existing registrants of domain names such as 'SouthAfrica.com' can keep hold of them.

The discussions on a future revision of the Trademark Law Treaty addressed issues that remained outstanding from the Second WIPO Internet Domain Name Process. In July 2001 WIPO initiated a process to examine the relationship between certain identifiers and domain names. In November 2002, as a result of meetings that took place in Geneva in May 2002, the standing committee decided that the scope of the Uniform Domain Name Dispute Resolution Policy (UDRP) should be extended to protect the names and acronyms of international inter-governmental organizations and country names against registration or use by persons unconnected with the authorities of the country in question. These recommendations were transmitted by WIPO to the Internet Corporation for Assigned Names and Numbers (ICANN), which has the responsibility for making any amendments to the UDRP.

At the May 2002 special session, most delegations had favoured protection against the registration or use of a domain name of an identical or misleading variation of a country name and that the protection should be extended to all top-level domains (ie, both generic and country-code top-level domains). However, three delegations - Australia, Canada and the United States - did not support the WIPO recommendations.

It is with this background in mind that one must consider the most recent recommendation by the standing committee that protection in reference to country names be extended only in reference to future domain name registrations. An additional issue in this regard is that ICANN considers WIPO recommendations as external advice and, therefore, non-binding. It would therefore seem, despite extensive work by the standing committee, that a definitive policy and enforcement regime for the protection of country names will not come to fruition in the near future. In the meantime, as a result of WIPO's most recent recommendation, current holders of such domain names can keep hold of them.

For discussion of other standing committee recommendations, see WIPO decides on scope of UDRP protection.

John S Macera, Macera & Jarzyna - Moffat & Co, Ottawa

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