The European Union Intellectual Property Office (EUIPO) has recently published a “Comparative Case Study on Alternative Resolution Systems for Domain Name Disputes”. It compares the procedures, fees, timelines and case statistics of all generic Top Level Domains (gTLDs) – the legacy ones as “.com”, ”.int”, etc. as well as the new ones “.food”, “.bio”, etc. (all subject to the Uniform Domain Name Dispute Resolution Policy – UDRP), and of the following country code Top Level Domains (ccTLDs): .AU (Australia), .DK (Denmark), .EU (European Union), .IT (Italy), .UK (United Kingdom), .CN (China), .JP (Japan), .NL (The Netherlands), and .US (United States). The full study is available here
It is interesting to note that, some of the gTLDs analysed, like the .CN, .EU and the .IT, have dispute resolution policies formulated in a way that allows complaints concerning second level domains’ registrations based on rights other than trademarks, such as GIs. This confirms the results of a 2018 WIPO survey on the state of play of GIs in the domain names space
In this context, on 9 April, at the 41st session of the World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), oriGIn encouraged Member States to re commend the ICANN (the private company in charge of the gTLDs management) to give GIs groups the possibility to benefit from the UDRP for disputes related to the registration of second level domain names in conflict with GIs. In particular, the presentation on “Internet issues” organised in the framework of the oriGIn side event, focused on transparency and legal certainty characterising GIs laws It clearly demonstrated that today there are not legal barriers to extend the UDRP to GIs for disputes concerning second level domains’ registrations.
This summary has been extracted from an “oriGIn Alert”, which is a service reserved exclusively to oriGIn members. Click here to join oriGIn
For more information about GIs and gTLDs see the concerning category in the section Policy and Advocacy