Governments Disagree On GI Protection At TLD Level

Governments met recently to try to decide: Should special protection be provided online for geographical indications, in addition to trademark rights, geographical names and names of international organisations?

Governments gathered at the 14-18 July Internet Corporation for Assigned Names and Number (ICANN) 47 meeting in Durban, South Africa were unable to agree on how to proceed in that regard, with a battle developing between the European Union and the United States and Australia.

US and Australian representatives warned that European wine industry associations, namely the European Federation of Origin Wines (EFOW), used an ICANN Government Advisory Committee (GAC) recommendation to the ICANN Board to block the application process for .vin and .wine. The protection of geographical indications is still under discussion internationally, the US representative said, adding that she is concerned the US wine producing industry might be discriminated against.

Portfolio provider Donuts (which has applied for 307 new TLDs and will start auctioning some next week) is seeking the allocation of .wine and .vin. It confirmed ongoing talks with “relevant GAC members” in its written reaction [pdf] to the GAC statement. Two other applicants are Famous Four Media Limited/dot Wine Limited and registry Afilias (both only for .wine).

ICANN currently is processing around 1,300 applications for new generic top-level domains (gTLDs), such as .book, .swiss or .bmw, through a complicated, multi-layered process.

Fierce discussions ensued, during which US and Australian representatives requested the removal of .vin and .wine from the GAC list, asking that their applications proceed to the next step in the application process. As the GAC in Durban could not agree how to proceed, another deadline for mid-August was set to allow work to continue among GAC members, internally and with the applicants. What will happen is no solution is found in mid-August is unclear.

With no consensus advice to further block the applications, they would just be dealt with under the existing ICANN new gTLD applicant guidebook. That has, according to the US, Australia and the three different applicants themselves, “enough safeguards” for IP protection.

While governments seemed unable to agree on consensus advice, contrary to the case of geographic names like .amazon, the EFOW announced it would call on its members to boycott both future .wine and .vin TLDs and not register them if they were not awarded the safeguards they wanted.

EFOW said that the Trademark Clearing House (TMCH) set up by ICANN is not enough to protect their intellectual property rights.

Governments at ICANN in the past were able to agree on stern protection of trademark rights in the new TLD procedure, but the protection of geographical indications is an unresolved issue in ongoing international negotiations.