How to defend the protection of geographical indications when allocating new gTLDs?

49On January 12th, 2012, ICANN (the InternView Postet Corporation for Assigned Names and Numbers) initiated the creation of new extensions (also called gTLD for generic Top-Level Domain), which were available for registration as of 2014.

With the arrival of the new gTLDs, geographical indications were in a difficult position and their protection was not always strictly respected. It has been noted in several cases that there were shortcomings in respect of their protection and that it was difficult for experts to find a solution to any possible dispute between domain names and geographical indications.

The arrival of new gTLDs and the surrounding uncertainties

Several challenges have emerged following the arrival of new gTLDs: these are outlined by AFNIC’s Issue Paper no 11. For these extensions to create an impact and meet their objective (to make websites easily identifiable without wading through search engines), they must be used. Yet to be used, they must be known and internet users must take ownership and become familiar with them. For this to happen, it is necessary that their holders promote them through effective advertising campaigns; for example, the very succesfull communication campaign that the city of Paris launched at the end of 2014 for <.paris>. Within two hours after the opening of registration, more than 6000 domain names had already been registered.

If the new extensions programme proves to be a success and combines, on the 1st April 2016, 16 million registered domain names with new gTLDs, time will tell if these domain names will be renewed, used and owned by Internet users.Hovere, the new extensions remain problematic in terms of geographical indications: what is going to happen when a new extension bears the name of a geographical inidication or has a name similar to it? Are there specific ICANN rules to protect these geographical indications and the usage that the owner can make of it?The definition of a geographical indication

WIPO (World Intellectual Property Organization) defines geographical indications as “a sign used on products that have specific geographical origin and possess qualities or a reputation that are due to that origin.”

The term is also defined by Article 22(1) of the TRIPS ( Agreement on Trade-Related Aspects of Intellectual Property Rights):

“Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. The geographical indication will identify a specific place or region of production which determines the characteristics of the product originating from this location.”

The quality and reputation of the  the product must be attributed to that place. Geographical indications should be protected because they guarantee the origin and quality of the product which will provide reliable information to consumers who will trust it.

The difference between geographical indication appellation of origin and trademarks

We must distinguish geographical indication and both appellations of origin and trademarks:

  • Appellation of origin: if the appellation of origin also implies a qualitative link between the relevant product and its place of origin, the difference is related to the place of origin which is predominant over the geographical indication. Thus, the quality or characteristics of a product protected by an appellation of origin due exclusively or essentially to the geographical origin when a single criterion (the quality or reputation) would suffice geographical indication.
  • Geographical indication is not a trademark: the latter is “a sign capable of distinguishing the goods or services of one entreprise from those of other enterprises”. As a protected intellectual property right, a trademark allows the trademark holder to prevent others from using it. The difference between geographical indication and a trademark is found under the regime of protection. Indeed, trademarks are afforded better protection than geographical indications. It is easier for a trademark holder to claim protection over the brand than to claim protection for a geographical indication because of a lack of uniformity between the legal rules.

However, if the definitions contain more or less the same elements, there is no harmonization in the laws and several treaties administered by WIPO such as the Paris Convention or the Lison and Madrid Agreements. Violations concerning geographical indications and domain names are handled case by case (for reasons discussed later in this article) which makes it difficult for experts to assess in which cases there has been a violation or not.

The example of <.wine> and <.vin>

One of the best known examples which portrays the difficulties encountered in seeking reconciliation between domain names and geographical indications is the matter of <.wine> and <.vin>.

In June 2012, new gTLDs <.wine> and <.vin > became available for registration with ICANN. For < .wine >, three companies applied to become registry operators, including Donuts, Inc. which also applied for <.vin>. However, most wines produced in Europe are protected by a geographical indication or an appellation of origin. Several organizations, committees or governments were concerned about this future availability of these new gTLDs fearing that the future registry operator did not respect geographical indications and allowed anyone to register a domain name with <.wine> or <.vin>.

An intergovernmental commission including government officials and representatives of international organizations was then established by ICANN. The GAC (Governmental Advisory Committee) commented on the issue but its members had different views. In September 2013, a decision was made (despite the diverging opinions of some GAC members) requiring that the normal procedure of ICANN  be followed: that is, “first come, first served” but also to negotiate with the future registry operators of <.wine> and <.vin>.

ICANN sought the advice of Jérôme Passa, a law professor at the Université Pantheon-Assas. In his analysis, he noted that there is no existing rule of law relating to geographical indications which would require ICANN to reject applications nor to accept them under certain conditions.

The advice of the GAC dated September 9, 2013 was accepted by the NGPC (New gTLD Program Comittee) on March 22, 2014: the applications for <.wine> and <.vin> should proceed with the normal evaluation process of the ICANN.

However on March 27th, 2014, the GAC issued a  notice advising on the importance for interested candidates and applicants to continue their negotiations to reach an agreement on the subject. For the GAC, it is vital to add warranties in order to combat fraud in respect of geographical indications and to protect customers.

On April 4th, 2014, the NGPC issued four resolutions including an extension of the deadline of 60 days for the decision relating to the applications,  encouraging parties to negotiate during this period.

In November 2014, Donuts, Inc. won the auctions for the <.wine> and <.vin> gTLDs, despite the objections of the wine industries and of the  Commission of the European Union (EU). However following a complaint from the EU and wine associations against ICANN’s delegation of <.wine> and <.vin>, the stakeholders were able to reach a private agreement, the terms of which have not been disclosed.

A Sunrise Period of two months started at the end of 2015, during which more than 1,300 trademark owners registered the domain names <.wine> and <.vin> and set up websites like <sherry.wine> or  <champagne.vin> which focused on sales, marketing and knowledge relating to wine. On January 20th, 2016, anyone was able to register these gTLDs.

It is to be noted that this case is significant because of ICANN’s stance on geographical indications, the violations of which need to be evaluated on a case by case basis:

  • Firstly, by reference to a given geographical indication which will make it possible to identify the applicable rule of law;
  • Secondly, by reference to the incriminating act: only certain acts will fall under this category depending on the identity of the perpetrator, the incriminating products used and the context within which the acts are perpetrated.

Ensuring that geographical indications are not being infringed will not be ICANN’s duty but that of the registrant of <.wine> and <.vin> (in this case, Donuts, Inc.) who has the duty to ascertain that the rules of law relating to geographical indications are respected.

The UDRP procedure and geographical indications

UDRP is a procedure which has been established for over a decade to combat cybersquatting. Cybersquatting occurs when a person, in bad faith or in order to make a profit, registers a domain name similar to that of a trademark to confuse internet users. The perpetrator of cybersquatting thus aims at benefiting from the reputation of a well-known trademark, allowing for the sale of products to confused customers who will think that they are using the official website of the trademark or for the reselling of the domain name at cost price to the trademark holder.

But a UDRP procedure has a limited application: it is open only to an applicant that can prove to hold the trademark rights. Thus, in principle, business names, geographical indications and personality rights do not fall within the scope of the UDRP procedure.

The only means for an applicant to win a UDRP procedure with regard to a geographical indication is to establish a link between the geographical indication and a registered trademark. However, it is very difficult to establish such a link and therefore to win a case within the context of an UDRP procedure.

The case of “champagne”

Two cases brought under scrutiny the term “Champagne”: as a domain name and appellation of origin.

On February 9th, 2008, the Tribunal de Grande Instance in Paris rendered its decision involving  a claim by the CIVC (Comité Interprofessionnel du Vin de Champagne) regarding the domain name <champagne.ch>, against a Swiss company and its French affiliate who distribute? biscuits under the name “Champagne” which the company had registered and which was available in France. The CIVC also requested the cancellation of the domain name. Indeed, the company chose this name because it matched the name of the Swiss canton of Vaud where it was indeed located.

However, the Treaty of May 14, 1974 between Switzerland and France on the protection of indications of source, appellations of origin and other geographic names specifies that homonyms are allowed only if they do not create confusion, which was not the case in this instance. The Tribunal de Grande Instance of Paris then decided that, in considering the products and the domain name, consumers were indeed being misled. The Tribunal also ordered the cancellation of the domain name.

However in 2011, the outcome of WIPO Case No. DCO2011-0026 on the domain name <champagne.co >, was different. The case opposed CIVC against the registrant for the domain name, <champagne.co>. The CIVC’s principal objective is to defend, preserve and promote the interests of the wines sold under the appellation of origin, “Champagne”. However, the CIVC failed to establish that its rights on the appellation of origin constituted an unregistered trademark which would have allowed it to assert its rights for purposes of the UDRP. According to Article 4(a) of the UDRP, a complainant must prove that the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The expert witness was not convinced by the  arguments of CIVC which evoked a mark that was unregistered but well-known. The CIVC had not sufficiently established the link between the appellation of origin and the trademark: the expert thus authorized the use of the domain name <champagne.co>.

The case of “Parma-schinen.com”

The Consortium of Certified Producers of Parma Ham owns several trademark registrations for the signs “PARMA”, “PROSCIUTTO DI PARMA” and “PARMA HAM”. A German individual registered the domain name <parma-schinken.com>. However, the term “schinken” is the translation of “ham” in German. Considering that “Parma” is protected by an appellation of origin was irrelevant to the UDRP, the expert witness took into account the registered marks to decide on the existing confusion between the domain name and the said trademarks, given that there was also a translation of the mark to be acknowledged.

It is therefore possible to revoke a domain name in the context of UDRP proceedings where an appellation of origin or a geographical indication is involved but only if there is a registered trademark which may be taken into account by the expert witness during the proceedings.

Should we expand the scope of the UDRP procedure to cover geographical indications?

In order for an expert witness to grant the revocation or transfer of a domain name in a UDRP proceeding, the main requirement is the existence of a justification of a trademark right and the applicant has to bear the burden of proof. Thus, the UDRP procedure applies only to trademarks and an applicant who has not registered a trademark in relation to a geographical indication has no other choice than to resort to legal proceedings by way of an action for unfair competition, an action for parasitism or an action for deceptive business practices.

Ultimately, would it not be wiser to extend the scope of the UDRP procedure to geographical indications and appellations of origin that have a significant economic and cultural value?

If this procedure works correctly for trademarks, it is also possible to think that it would be the case also for geographical indications.

Proposals to this effect were made by the Standing Committee on Trademarks, Industrial Designs of and Geographical Indications (SCT) at its thirty-first session in Geneva (17-21 March 2014). The authors of the proposal expressed their concerns with regard to the existing gaps in the UDRP procedure which constitute an “obstacle for safeguarding the legitimate interests of rights holders”.

In fact, to accept that registrants use domain names enjoying a geographical indication cause prejudice to the domain name system as a whole. The system is mainly based on the trust of internet users and if they are deceived by such practices, the entire system may suffer.

The only difficulty concerning geographical indications is the absence of an official registry which does exists for trademarks. But this difficulty can be resolved if a registry is created, to the extent that it would be possible to enhance the UDRP procedure so that complaints of violation of the protection of an appellation of origin or a geographical indication are accepted.

For now however, amending the UDRP procedure to  integrate geographical indications does not form part of the agenda. This matter will have to be followed…