The Queen, through her New Zealand government representatives, has been accused by the World Intellectual Property Organisation (Wipo) of “reverse domain-name hijacking” as a result of a failed action by the government to secure the rights to the name newzealand.com.
Government representatives, led by Trade and Industry Minister Jim Sutton, took action to claim the rights to newzealand.com from Seattle company Virtual Countries, which has been collecting domains expressing worldwide location names and offering tourism information on the associated websites (see Trade NZ faces off against MED report on domain names).
Wipo has rejected the claim. While anyone whose registered trademark is registered as a domain name by another party would have a good chance of regaining the rights to the name, Wipo’s administrative panel says “New Zealand” does not qualify as “a trade or service mark”.
“As an indication of geographical origin, when properly applied to goods and services, the name ‘New Zealand’ does indeed serve to distinguish goods and services emanating from New Zealand from the goods and services emanating from other geographical areas,” the panel says.
“But indications of geographical origin are not of themselves trade/service marks. They are not trade/service marks for precisely the reason that they serve to indicate geographical origin. Trade/service marks on the other hand indicate a very precise trade origin. They identify the specific trader, the source of the goods/services.
“Ordinarily, an indication of geographical origin cannot serve that purpose. A wine label reading ‘New Zealand wine’, for example, indicates that the wine emanates from New Zealand, but it does not indicate which of the hundreds of New Zealand wine producers is the source of that particular wine.”
The complainant, the panel has found, has failed to demonstrate that “New Zealand” has acquired the status of a trade or service mark. Wipo calls the arguments by which the complainant arrived at this conclusion, “contrary to all the tenets of trademark law and practice.”
Furthermore, on the basis of a sentence in a letter from the New Zealand government and the Wipo secretariat, stating that “New Zealand law, custom or practice does not preclude the use of country names under any circumstances”, Wipo maintains that the government knew it did not have a case, and hence has put forward an “unmeritorious” complaint. Therefore, says Wipo, the ultimate complainant, the Queen, is herself guilty of “reverse domain-name hijacking”.
In a previous finding, Wipo directed that the New York based company Bacelona.com turn over that domain name to the Barcelona City Council, which had registered the name “Barcelona” as part of several trademarks.
On the other hand a petition by a local authority of the town of St Moritz in Switzerland failed to have stmoritz.com turned over by a private company. Internet commentators have already alleged inconsistency in the Wipo dispute resolution procedure in the light of these two decisions, and the newzealand.com decision seems likely to heighten the controversy.