On 18 March 2014, the delegations of the Czech Republic, Germany, Hungary, Italy, Republic of Moldova and Switzerland submitted the following proposal (SCT/31/8 Rev.) on the Protection of Geographical Indications and Country Names in the Domain Name System for consideration by the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT).
This proposal is expected to be discussed on Thursday, 19 March 2014. The main ask of Czech Republic, Germany, Hungary, Italy, Republic of Moldova and Switzerland is to expand cover of the WIPO Uniform Domain Name Dispute Resolution Policy to “modify the UDRP so as to permit complaints to be made concerning registration and use of domain names in violation of the protection of geographical indications.” In addition, the proponents of this paper request the preparation of a study to investigate the following 3 questions:
- whether the need of users for the protection of geographical indications in the DNS has changed
- whether the measures available today for holders of geographical indications against infringing domain names are effective enough and
- how the existing legal and procedural framework could be improved.
The proposal notes:
The SCT already addressed the issue of possible conflicts of domain names and intellectual property rights, including trademarks, country names and geographical indications, parallel to the first and second WIPO Internet Domain Name Processes. Several aspects of cyber squatting in the DNS have raised reasonable doubts among members of SCT as to whether the WIPO Uniform Domain Name Dispute Resolution Policy (UDRP) would provide effective forum for mediation, therefore proposal was made to review and broadening the scope of UDRP to country names and geographical indications.
The cosponsors of this proposal are of the opinion that discrepancies regarding the effective protection of intellectual property rights in the DNS have not been duly addressed in the last decade. In addition, the introduction of new gTLDs resulted in new undesirable possibilities for registration and use of domain names that violate intellectual property rights. Therefore it seems to be essential for the SCT to further analyze the particular points of conflicts in order to identify areas of improvement and possible measures to be taken.
The UDRP is a well recognized dispute resolution service which proved to be very successful in the last 15 years. According to Paragraph 4) a) of UDRP policy, the dispute resolution is only available for request based on earlier trademarks or service marks. As a consequence of this rule, country names, indications of source or geographical indications cannot be invoked in the UDRP, even though domain names can be easily registered and used in a deceptive manner. This deficiency already appeared in the First and Second WIPO Domain Name Process, where several comments clearly indicated that such limited scope of UDRP is an obstacle for safeguarding the legitimate interest of right holders.
The increasing role of Internet in the global movement of goods and services is evident, such as the growing importance of domain names which became the most relevant business identifier for consumers. However it is unclear even today what impact of this impressive development of trade on the Internet and the growing number of delegated domain names had on the protection of country names and geographical indications. It is also necessary to learn how the limited scope of UDRP affected the legitimate interest of their right holders.
However, as a consequence of such high commercial value of geographical names, they are exposed to misuse and counterfeiting. The abuse of geographical indications limits access to certain markets and undermines consumer loyalty. In the absence of effective measures against misuse of geographical indications and other important geographical names in the operation of DNS, the risk of infringement of such intellectual property rights increased significantly.
The cosponsors of this proposal therefore propose to extend the discussion in the SCT with a view to making a recommendation to modify the UDRP so as to permit complaints to be made concerning registration and use of domain names in violation of the protection of geographical indications and to confirm the need of the extension of UDRP to country names following the decision of the General Assembly in 2002.