This is the second of a two-part article. Last week, the author explored the problems which countries like Jamaica have in protecting their names as domain names.

At the meeting of the WIPO General Assembly in September 2002, a majority of delegations recommended that the UDRP be amended to provide protection for country names in the Domain Name System.

The Standing Committee on the Law of Trademark, Intellectual Designs and Geographical Indications (SCT) continued discussion of these issues at its Ninth Session, and delegations supported the view that protection should be extended to the long and short names of countries, as provided by the United Nations Terminology Bulletin.

The SCT decided, inter alia, that:
(i) The protection should be operative against the registration or use of a domain name which is identical or misleadingly similar to a country name, where the domain name holder has no right or legitimate interest in the name and the domain name is of a nature that it is 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;

(ii) Each country name should be protected in the official language(s) of the country concerned and in the six official languages of the United Nations; and

(iii) The protection should be extended to all future registrations of domain names in generic top-level domains (gTLDs).

No Clear Solution

Interestingly, not all delegations agreed with the SCJ decision and pointed to a number of thorny issues which arose as a result of the decision. So, for example, the question remains as to whether the list of names of countries should be finite or whether it should be possible to notify additional names of countries or to amend existing notification of names at a later stage.

States may also have to consider whether it should be left entirely to each country to determine, for the purpose of the protection at issue, by which names it is "commonly or familiarly known", or whether a mechanism should be established that allows other countries to object to individual notifications. In the latter case, the details of such mechanism as well as the effect of any objections will have to be determined.

Countries with Multiple References
Interestingly, there are some countries which are commonly known by a wide variety of country names which, arguably, unfairly extends the protection which these countries will enjoy and will severely limit the ability of private Internet users to choose appropriate domain names.

Only use "info"?

Notably, there is an argument that only the ".info" top GLD should reserve the names of countries in Latin characters in their official language(s) and in English, and should be assigned to the corresponding governments and public authorities at their request for use. The argument runs that, provided the governments of each respective state are able to register the ".info" domain name and therefore provide all the official information about the country, private commercial interests should be allowed to use the country name as part of the top GLDs. So, if I really want to learn about Jamaica or Barbados in the Caribbean, I would know to go to "Jamaica.info" or "Barbados.info".

This is a tough argument based on the popularity of the ".com" domain names.

To further clarify the type of conduct which this proposed cause of action was intended to cover, the WIPO Interim Report included a number of illustrations of what would be deemed good and bad faith conduct on the part of domain name registrants.

Among the illustrations establishing good faith featured: "[t]he use of the domain name as the address of a website or other on-line location devoted to the provision of information concerning the country, region or municipality corresponding to the domain name ..., whether or not such information is provided for financial gain." But this would mean that Caribbean On-line, the owner of "jamaica.com", trinidad.com", "barbados.com", etc could keep those DNS, even in the face of opposition by the governments of Jamaica, Trinidad and Barbados.

Challenge Procedures

Some also advocate the creation of a challenge procedure permitting governments to recover country domain names in all circumstances and irrespective of the use which is being made of them by their registrants, without any possibility of recourse to national courts. According to this view, this protection is particularly important for developing countries, in light of the difficulties they are facing in attempting to bridge the digital divide.

The domain names "england.com", "usa.com" or "canada.com" are arguably relatively unimportant to those countries compared with the importance to Caribbean (and other Third World) countries of their country domain names to their tourism industries and for other aspects of trade.

Blame Countries Themselves?

Even as we contemplate the debate as to the appropriate stance which should be taken in relation to this matter, many of us might wonder how it is that so many Caribbean countries find themselves in this unfortunate position. Some blame the Government and insist that it was hopelessly slow and uninformed about the need to register domain names.

While one may sympathise generally with the sentiment that developing countries are reaping the product of their own tardiness in appreciating the role of intellectual property rights, the comment really does not advance the debate. It cannot seriously be proposed that the respective governments themselves should have been cyber squatters and registered their country names as domain names at a time at which they had no legitimate intention or expectation of using the names.

It is not, of course, just the Government which finds itself in this embarrassing position. "Beenieman" is a well-known Jamaican reggae artiste. However,"www.beenieman.com" is registered by a company called Cyber Construction Inc of New York. Irie FM is a popular Jamaican radio station, but www.iriefm.com is owned by an individual who is not into radio or any form of entertainment and wants to be paid for the name. Of course, Beenieman and Irie FM could rely on the UDRP to seek redress.

One possible solution is, perhaps, for us to focus on our country-code top level domains and to ensure that the appropriate registrations are secured, eg "www.jamaica.com.jm" or "www.barbados.com.bb" or www.beenieman.com.jm."
The discussion at WIPO continues and we are not sure how the international community will eventually solve this issue.

Conclusion

I believe that the issue of country domain names is illustrative of a number of points which cannot be over-emphasised. They are as follows:

1. Intellectual property rights - while potentially valuable - may be lost if not rigorously protected and defended. Throughout the Caribbean region and indeed the developing world, both governments and individuals have failed to appreciate this point in the past and are now paying dearly for their ignorance.

2. In the Caribbean, we seem sometimes to be so way behind in the game. While we struggle to grapple with the basic concepts of intellectual property law (what is a trademark; why should I register it; does my music agreement adequately set out what aspects of copyright I assign and what aspects I will retain), those in the developed world are engaged in much more complex issues, which may have serious implications for the region as a whole.

3. In the debate of these issues at the highest levels of the international arena, the nations of the Caribbean must be present; must be knowledgeable and well prepared: and must, at least, know and understand the implications of the possible outcomes of the debate.

- 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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