If you were to type the web address "www.jamaica.com" into the address bar of your Internet browser, you might expect to be taken to a site owned or operated by a department of the Government of Jamaica, containing information about the civic affairs of Jamaica.

Instead, however, you would be taken to a site which is owned by a private Canadian-based company, Caribbean Online, which sells vacations to the Caribbean. The corporate head office is in Vancouver, British Columbia, and the website describes the corporation as "a privately funded, start-up company incorporated in the state of Delaware that has as its principal business the creation, communication, facilitation and management of travel research, planning and booking for the Caribbean."

What is more amazing is that the typing in of the web address of "www.barbados.com" will take you to the same site. So will the address "www.trinidad.com". The address "www.antigua.com" will take you to a site which is not owned or operated by the Government of Antigua, but by the Antigua Group, Inc, a leading designer and marketer of men's and women's lifestyle apparel and sportswear under the distinctive "Antigua" label. As far as is discernible, the site has nothing to do with the island of Antigua.

The address "www.cayman.com" will take you to a holiday reservation site registered to Grow House Limited. No country of incorporation is given, although all the company's mail is to be forwarded to Network Solutions in Virginia, USA.

Of course ".com" is only one of 13 long-standing generic top level domain names (GTLDs), albeit the most used and best-known. So I considered the possibility that the other TLDs might reflect a different reality. However, when the address "www.jamaica.net" took me to a website for an international money transfer site known as "Xoom", registered to Sunburst Communications of New York, I was near despair and concluded my research.

Since we all appreciate the value of domain names and their important trademark-like qualities, how is it that the names of these various sovereign Caribbean nations are owned and used by private interests from outside the region? How is it that the various regional Governments have failed to take steps to prevent or remedy this state of affairs. Of course, we note that this is not just a Caribbean problem. But what can be done?

The answers are complex and not generally encouraging.

The Problem of Protecting Domain Names

Sometime in 2002, the Jamaica Tourist Board (JTB) announced that it was prepared to take legal action against Caribbean Online for the right to use the domain name "Jamaica.com". Even back then, however, the JTB's confidence would have been shaken by the World Intellectual Property Organisation's (WIPO's) December 20, 2002 ruling against Queen Elizabeth II as Head of State of New Zealand in whose name an alleged cyber-squatting case was filed by New Zealand against an American firm which had registered the domain name "newzealand.com".

Three WIPO arbitrators found, inter alia, that, since New Zealand had not before registered the disputed name as a trademark and that, since the US firm "Virtual Countries Inc" had not acted in bad faith in registering the domain name, the US firm should be allowed to retain the domain name.

The arbitral Panel found it significant that, whereas the US company was the proprietor of a US trademark for "NEWZEALAND.COM"" for business advertising, the state of New Zealand had no trademark registrations of its name and had not provided in evidence details of any such registrations in the name of anybody else whom it represented.

The panel observed that the trademark and service mark applications for "New Zealand" filed in New Zealand by the State of New Zealand were themselves no indication that it had any relevant rights in the name. The panel found that the applications were open to the objection that they were deceptive unless the specifications were restricted to goods or services from New Zealand; yet, if the specifications were so limited, the inherent descriptiveness of the name would have been highlighted, and so point further to New Zealand's lack of entitlement to registration of the mark.

Domain Name Dispute Resolution

The real difficulty faced by New Zealand in the arbitration - and possibly to be faced by any Caribbean government which decides to embark on a similar exercise - is that the nature of the dispute does not easily fall within the recognised dispute resolution system which applies to domain names. In the late 1990s, ICANN developed the UDRP (Uniform Dispute Resolution Policy) which has been adopted by WIPO and which applies to the generic TLDs - .com, .net, .org, .biz, .aero, .coop, .name, .jobs, .mobi, .pro, .travel, .info and .museum. The policy is a mandatory form of arbitration that all applicants must accept before registering a domain name.

The complainant can initiate the UDRP by filing a complaint with the WIPO arbitration centre. He does so against the background that domain names can be registered only once, and the essential principle concerning their registration is "first come and first served". To obtain relief, the complainant is required to prove each of the following elements:

(a) Identical or confusingly similar domain name
That the domain name registered by the respondent is identical or confusingly similar to a trademark in which the complainant has rights;

(b) No legitimate interest
That the respondent has no right or legitimate interest in the domain name; and

(c) Bad Faith
That the domain name has been registered in bad faith.
It would, no doubt, have been very difficult for the Jamaica Tourist Board to have proven those three elements which are required to succeed in a UDRP complaint in its dispute. The Board eventually acquired the Internet domain name "visitjamaica.com" from a US company at a cost of US$500,000. After losing its WIPO Panel decision, the New Zealand Government also paid US$500,000 for the domain name "www.newzealand.com".

The UDRP relates only to domain names which have a relationship with trademarks and not, for example, to trade names and other intellectual property rights. WIPO has recommended that, as regards trade names, geographical names and personality rights, there should be no move to include these rights in the UDRP, on the basis that it would be impossible to identify what can be protected due to the diversity of national rules on the subjects.

Since countries (or even cities or other geographical groupings) would not ordinarily register their own name as a trademark, such country (or city, etc) is normally powerless to prevent private commercial interests from taking advantage of these names. Also, unless the country or city could prove, for example, that the domain name owner had no genuine desire to use the domain name and only wanted to sell the name, it would not be able to establish bad faith on the part of the domain name owner.

This article is an adaptation of a paper presented by Peter Goldson at the Commonwealth Law conference held in Nairobi, Kenya, September 2007

Peter Goldson is a partner at Myers, Fletcher & Gordon and is the head of the firm's intellectual property department.

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