WIPO conclusion benefits government fight for 'southafrica.com'

South Africa

The World Intellectual Property Organization (WIPO) Standing Committee investigating the use of geographical names as domain names has concluded that most governments (with the exception of Australia, New Zealand, Canada and the United States) believe that country names deserve some form of protection against registration or use by persons unconnected with the country in question. This supports South Africa's claim that geographical names are part of a country's sovereignty and has significant bearing on its fight for 'southafrica.com'.

The WIPO special session recommended that a new list of country names be drawn up. It also suggested that the additional names by which countries are commonly known be protected. This would cover domain names that are (i) identical or misleadingly similar to a country name, or (ii) likely to mislead users into believing that there is an association between the domain name holder and the constitutional authorities of the country in question.

The special session was called in response to an appeal in New York by Virtual Countries, a US company, against a lower court's decision that it was not entitled to register 'southafrica.com'. The appellate court rejected the appeal, finding that the court did not have jurisdiction over South Africa as it did not conduct commercial activity in the United States.

Virtual Countries registered the domain name in 1995. Five years later, the South African government sought registration of the same name to establish a portal which would promote trade and tourism.

On discovering that the name had already been assigned to an entity unrelated to South Africa, the government announced its intention to lodge a dispute under Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings. Virtual Countries filed a pre-emptive injunction in a US federal district court to stop the launch of the UDRP proceedings, and to seek a declaration that it had the sole right to the domain name.

In an about turn, the South African government then indicated that it would not pursue the UDRP proceedings, as it would be unable to establish that it was the owner of a trademark or service mark that was identical or confusingly similar to 'southafrica.com'. The SOUTH AFRICA mark on its own, like other geographical terms, is not capable of registration under existing trademark legislation because it cannot be shown to be distinctive.

The decision not to proceed with the UDRP proceedings was in the circumstances well considered, and may have been motivated by the fact that the litigation coincided with WIPO's investigation into the use of geographical names as domain names.

Pam Stein, Cheadle Thompson & Haysom, Johannesberg

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