#gTLDS #ICANN #UDRP #GIs: Recent developments and oriGIn activities
While both GIs and trademarks are recognized in the WTO’s Agreement on Trade Related Aspects of Intellectual Property (TRIPS), GIs have not been accorded consistent protection commensurate to that of trademarks under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP), which regulates the disputes that arise in generic Top Level Domains (gTLDs) when a second level registration (the left part of the domain before the dot, e.g. champagne.co) conflicts with an intellectual property right.
oriGIn believes that GIs should be considered as prior rights deserving protection in case of irregular use in gTLDs and has been campaigning for that (see our initiatives). In particular, the ICANN process of attribution of new gTLDs has dramatically increased the challenges in terms of counterfeiting and misappropriation for GIs (let’s think of new delegated strings such as “.bio”, “.food”, “.pizza” and “.coffee” just to name a few – some 938 new generic top level domain names – out of the 1,400 requested – have already become operational to this date). In light of this, we believe that – in the context of the Internet governance debate – a thorough discussion on the most effective ways to ensure an effective protection for GIs in gTLDs should be undertaken at the global level.
To confirm such fears, the World Intellectual Property Organization (WIPO), which thought its Arbitration and Mediation Centre is one of the service providers accredited by the ICANN to manage the UDRP, in March released data showing that disputes concerning gTLDs are on the rise and the proportion relating to new gTLDs is growing: 2,754 cases were brought under the UDRP in 2015, an increase of 4.6% over the previous year; disputes relating to new gTLDs accounted for 10.5% of WIPO’s UDRP caseload (considering the cases already received in 2016, cases related to new gTLD represents the 15% of the total).
Against this background, the oriGIn manual Callenges for Geographical Indications (GIs) in the context of the ICANN new generic Top-Level Domains (gTLDs) – A Manual for GIs Groups to Navigate the New Environment, represents an invaluable source of information for GIs groups and experts, which need to navigate the new Internet domain names’ environment. By showing the potential increase in legal expenses for GI groups, which must monitor and enforce intellectual property rights against third parties filing top level as well as second level domains corresponding to, or conflicting with, the GIs they represent, oriGIn hopes that this manual will promote, at the global level, a thorough discussion on the most effective ways to ensure an effective protection for GIs in the Internet domain names’ environment. ICANN has in fact started a review Rights Protection Mechanisms, such as the UDRP and the Uniform Rapid Suspension system. oriGIn will take this opportunity to reiterate its criticism as to the costs and scope of application of such mechanisms.
Likewise, oriGIn follows with interest and support the proposal, made by a group of European countries within the WIPO Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT), for the amendment of the UDRP rules to allow complaints to be made concerning registration and use of second level domains in conflict with GIs.