29/07/2020 – ICANN/UDRP: oriGIn and EFOW propose the introduction of a clause in bilateral GIs agreements to strengthen protection in the Internet Domain Name Environment

ICANNwebHistorically, GIs have been excluded from the Uniform Dispute Resolution Policy (UDRP) – the ICANN’s (Internet Corporation for Assigned Names and Numbers) dispute resolution mechanism implemented by accredited arbitration centers around the world (including the WIPO Arbitration and Mediation Center) to resolve conflicts in Internet generic top-level domain names (TLDs), such as .int, .com, .food. These conflicts concern the attribution of second level domains in conflict with Intellectual Property Rights (IPRs). As a result, GI groups face problems in fighting effectively against practices such as cyber-squatting (i.e. bad-faith second-level domain names registrations which reproduce GI names).

On the other hand, a growing number of country-code top-level domain names (ccTLDs), implemented by national authorities, consider GIs a valid title to activate dispute resolution mechanisms concerning second-level registrations in conflict with IPRs. The more this trend continues, the more chances we will have to obtain a reform of the UDRP at the ICANN level. In this respect, oriGIn and the European Federation of Origin Wines (EFOW) have recently proposed the EU the introduction of a specific clause in bilateral agreements with third countries. This clause would ensure that appropriate remedies will be available in the parties’ ccTLDs when a person registers, in bad faith, a second level domain name that is similar or liable to cause confusion with a GI: “In connection with each Party’s system for the management of its country-code top level domain (ccTLD), appropriate remedies, such as revocation, cancellation, transfer, damages, or injunctive relief, shall be available, in cases where a person – not being the recognized holder of a geographical indication – registers or holds a second-level domain name that is identical or confusingly similar to the said geographical indication”. We encourage all members to verify the dispute resolution policy of their respective ccTLDs, and conduct a campaign at the national level to make sure it explicitly mentions GIs as a valid IP title to activate curative mechanisms. 

To follow the developments of GIs protection in the Domain Names Environment and the oriGIn initiatives in this field, please have a look at the dedicated page of our website

 

 

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