Brands Containing “Geographic Terms” May be at Risk In The Next gTLD Round

Does your or your client’s brand contain a “Term of National Significance”? If it contains a word that matches a geographic place, or feature name, or could be characterized by a government as such, then you may be surprised to learn that some government body, national association, or regulatory group could interfere with your obtaining a top-level domain name even if it reflects your brand. Many famous brands coincidentally match a geographic name, and face the possibility of having their future .BRAND top-level domain (TLD) rejected because a government claims “sovereign rights” over the term.

Such conflicts were one of the most controversial aspects of the first new generic top-level domain (gTLD) application round, especially for .BRAND TLDs. For example, ICANN rejected the good-faith application for .TATA by the Indian conglomerate Tata (named after the Tata family and protected globally as a trademark) because “Tata” is the name of a Moroccan province, and the Moroccan government would not consent to the application, even though Tata had Moroccan trademark registrations dating back to 2008. Reportedly, the company Tata had never had a conflict or objection before from the Moroccan government over the use of its name, nor had there been any confusion that its famous brand could be confused as endorsed by the government, or that its use could confuse citizens who would be looking for information about the Moroccan province online. As we prepare for the next round, brands should be aware that this issue may affect their ability to obtain and enjoy freedom to operate the TLD that matches their brand.

Steps to Reach a Solution

In April 2017, the co-chairs of ICANN’s Subsequent Procedures Working Group invited ICANN community members to present positions, or possible solutions, in a webinar which laid the foundation for community discussions to take place at the ICANN meeting in Johannesburg later this month.

One notable webinar proposal was the “Repository Proposal,” which advocated for creating a “Repository of Names of Geographical Significance” into which governments could add the names of places, rivers, mountains, regions, national monuments, etc.—essentially, any terms that the governments could identify as “sensitive” in their countries. Under the Repository Proposal, all future gTLD applicants must check the Repository for their desired TLD. If the TLD matches a Term of National Significance, the applicant must obtain prior consent for its intended TLD from all governments that added the term.

Many individuals (including Intellectual Property Constituency members and GAC representatives) voiced concerns about the Repository Proposal, such as:

  • It restricts a trademark owner’s right to use its mark(s) under international law;
  • It ignores the principle that governmental rights over terms of geographical significance (if any) are restricted to their national borders;
  • International law has no definition of “Terms of National Significance”;
  • It creates conflict if one government consents to a .BRAND TLD, but another government does not; and
  • It gives individual governments a veto, with no possibility of appeal or due process, over the global internet’s expansion.

GeoPIC—A Proposed Solution

I presented at the webinar a proposal that is much simpler, and fairer, than a Repository and is consistent with international law—a Geographic Term Public Interest Commitment (“GeoPIC”). Under the proposed GeoPIC, an applicant for a TLD that is an identical match to a geographic term protected under national law would, at governmental request, include in its Registry Agreement with ICANN a binding undertaking to not use the TLD in a way that might confuse an internet user into thinking there is a connection between the registry and a national government or geographic term.

The GeoPIC has many advantages:

  • It accords with norms of international law and does not create any new legal rights;
  • It does not diminish the rights of others—it respects both trademark rights and the desires of governments to protect terms of importance to them;
  • It is cost-effective;
  • It works for all registry types and is language- and script-neutral;
  • It is easy to implement and relies on an existing enforcement mechanism;
  • It is predictable for applicants while respecting individual governmental concerns; and,
  • It is consistent with the “permissionless” evolution of the internet.

I will present the GeoPIC proposal again later this month at the ICANN meeting in Johannesburg. In the meantime, listed below are the basic terms of the GeoPIC proposal. I welcome all feedback—especially suggestions for improvement.

Summary of GeoPIC

Applicable Terms:

Only applicable to geographic and territorial terms protected under national legislation (“Geographic Protected Terms”).

Purpose:

To address the governmental concern that an applied-for string at the top level, which is identical to a Geographic Protected Term, might be used in a manner:

  • That falsely suggests to the public that a connection exists between the TLD or its Operator and the Geographic Protected Term, and/or
  • That is otherwise of a nature as to mislead the public as to the existence of a connection between the TLD or its Operator and the Geographic Protected Term.

Proposed Procedure:

  1. Applicant applies for a TLD containing a Geographic Protected Term
  2. ICANN receives a timely objection to the TLD Application from the GAC
    • Working options for what constitutes a “GAC Objection”:
      • GAC Consensus Advice
      • Objection from five or more GAC members
      • Objection from three or more GAC members
  3. TLD Applicant agrees to a Public Interest Commitment (PIC) that requires:
    • That the TLD Applicant not use the TLD in a manner that falsely suggests to the public that a connection exists between the TLD or its Operator and the Geographic Protected Term (“GeoPIC”).
  4. GeoPIC will be included in the TLD Applicant’s Registry Agreement, should such Agreement be executed by ICANN. This GeoPIC shall be enforced in the same manner, and process, currently contained in the Registry Agreement for other PICs.
    • PICS are enforced through:
      • Complaints to ICANN Contractual Compliance, which may result in ICANN Compliance Action
      • Formal PICDRP complaints to the PICDRP Standing Panel, which can make a formal ruling of compliance or non-compliance

A note on the intended scope of the proposal:

This proposal is not intended to replace the current restrictions on geographic terms at the top level, which are set out in the Applicant Guidebook (“AGB”—which can be found here) used in the 2012 Round at Sections 2.2.1.4.1 and 2.2.1.4.2 (extracts of which are here for convenience). The proposal is intended to address terms which fall outside of these AGB provisions and which might, under the previous AGB, otherwise have given rise to GAC Advice under Section 3.1 AGB.

Article source: http://www.lexology.com/library/detail.aspx?g=e8114839-94f2-43fc-a962-dc455f21fc94