[A2k] WIPO SCT- Geographical indications, country names and the domain name system: Czech Rep, Germany, Hungary, Italy, Moldova and Switzerland

Thiru Balasubramaniam thiru at keionline.org
Thu Mar 20 04:32:56 PDT 2014


http://keionline.org/node/1980

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<http://www.wipo.int/edocs/mdocs/sct/en/sct_31/sct_31_8_rev.pdf>
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."



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