WIPO decision may deter governments seeking '.com' domains

International

In Her Majesty The Queen, in right of her Government in New Zealand v Virtual Countries Inc, a three-member World Intellectual Property Organization (WIPO) panel has determined that the New Zealand government had engaged in reverse domain name hijacking in a case involving the domain name 'newzealand.com'. The decision may deter governments from filing similar cases until the Uniform Domain Name Dispute Resolution Policy (UDRP) is revised to protect country names, as recommended by a WIPO report.

US company Virtual Countries Inc registered the domain name 'newzealand.com' in 1996 for use as an informational portal on New Zealand. In 2000 Virtual Countries obtained a US trademark registration for NEWZEALAND.COM.

Encouraged by its victory in the 'newzealand.biz' Case (see Government wins 'newzealand.biz' despite lack of trademark rights), the New Zealand government filed a UDRP claim to obtain the transfer of 'newzealand.com'. The government's main argument was that it had filed five New Zealand trademark applications for the 'New Zealand' mark in 2001. The government also claimed that Virtual Countries had no rights or legitimate interests in the name because only the New Zealand government can have those rights and interests.

Virtual Countries refuted this argument, and cited the government's comments to the Second WIPO Internet Domain Name Process against the protection of country names in domain names as evidence that the government does not have exclusive rights to use the words 'New Zealand' in a domain name.

The panel found that the government had failed to provide sufficient evidence that it had acquired trademark rights in 'New Zealand' to refer exclusively to the New Zealand government. The panel also determined that the government was well aware that its claim was baseless and therefore declined to transfer the domain name, even finding the government guilty of reverse hijacking.

While the 'newzealand.com' decision may not settle the debate over the ownership of domain names identical to country names, it makes it clear that until the UDRP is changed to allow for greater protection of country names, the registrants of those names are likely to retain ownership unless a government can demonstrate that it has acquired trademark rights in its country name.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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