On November 14th 2007, FIFA scored the winning goal by obtaining the transfer of the domain name fifa.co.za through the co.za Alternative Dispute Resolution (ADR) service (www.domaindisputes.co.za). The respondent had registered fifa.co.za in November 2005 aiming to cash in on FIFA’s trade mark ahead of the Soccer World Cup to be hosted by South Africa in 2010.
The Adjudicator in this complaint stated that it is not the extent to which the registration will prejudice FIFA’s licensing and franchising efforts, but the potential for it to do so. Thus, even a site which is not directly profiting from a domain name could constitute an abusive registration, which infringes upon the rights of the trade mark holder.
The best possible way to avoid such a dispute is to take the pre-emptive step of registering your trade mark as a domain name in the countries in which you trade or intend to trade.
Lexsynergy is a specialist domain name management company that assists trade mark owners to secure their brands as domain name worldwide, while managing their domain name portfolio through a central administration system. Contact info@lexsynergy.com for assistance in protecting your brand.Decision reported at www.domaindisputes.co.za
Source: Daniel Greenberg of Lexsynergy Limited writing for DomainNews – February 8th, 2008
