Wednesday, February 5, 2014

.WINE and .VIN : views of the European Commission regarding proposals for additional safeguards for GIs

Letter sent from the EUROPEAN COMMISSION to Dr. Stephen D. Crocker Chairman of the Board (ICANN)

The European Union (EU), its Member States, Switzerland and Norway, would like to share their views on the current state of play regarding the delegation of .Vin and .wine.

Following the deliberations at the Buenos Aires meeting, a large group of GAC members from different regions agreed to advise the ICANN Board accordingly. Only three countries explicitly expressed opposition against this stand, in favor of the delegation of the new gTLDs under the current conditions. The rest of the GAC remained neutral.

Furthermore, it is worth stressing again that during the Beijing Meeting there was a consensus to put on hold the delegation of .wine and .vin (see Beijing GAC Communiqué) contrary to many strings which were listed under safeguards l and 2 sections of the Communiqué. According to the position collectively expressed in the Beijing GAC Communiqué, the EU, its Member States, Switzerland and Norway still believe that these general safeguards are not sufficient and that the Beijing consensus was overruled inappropriately when the Chair advised the Board to proceed with the delegation of the wine gTLDs instead of presenting the different views on the matter and the fact that no consensus was reached. As you know, this opinion has been highlighted at a number of occasions to the GAC and to the Board (letters to the GAC of 29th July and 19th September and letters to the Board of 12th September and November 2013). I attach for your convenience the letter of 29th July which sums up the viewpoint of EU Member States and EU right holders, its legal background as well as a set of proposals to carve out a way forward to the delegation of .vin and .Wine­

As a major Wine producer, the EU is committed to ensure that a high-level of protection of Geographical Indications (GIS), as well as compliance with relevant, international, regional and national legislation is being strictly applied by all businesses dealing with wine. However, they have been prey to abuse in the Domain Name System (DNS) for years. Already, back in 2001, the Second WIPO Internet Domain Name Process report reflected the amount of EU wine GIs registered by companies or individuals outside the EU without there being any relationship between the domain name registrant and the geographical area to which the identifiers refer (annexes VIII, IX, X and XI). The report asserted the abuse as an undeniable fact and claimed that these practices are misleading and harm, first, the integrity of the naming system in which those geographical identifiers operate, and secondly, the credibility and reliability of the DNS (paragraph 238).

Cybersquatting and other forms of abuse have a significant negative effect on the wine producing sector, mainly SMEs (small and medium-sized enterprises) and family business, rooted in rural areas that lack the resources and financial means to get to identify and address misappropriations that can affect them and to battle to defend the reputation of their products in the appropriate courts.

We need to remind you that there are international instruments (the Paris Convention; the Madrid Agreement; the Lisbon Agreement; the TRIPS Agreement, with 159 signatories and bilateral treaties), apart from national laws on the matter, which ought to be respected by ICANN according to its founding documents (Article 4 of its Articles of Incorporation).

A11 GAC members agree that geographical indications deserve adequate protection against misuse in the DNS (e. g.: Buenos Aires GAC Communiqué), a belief that is based on the assumption that they are recognized by law. But, the understanding of GIs and the degree of implementation of intematìonal conventions differ among members. Hence, a limited number of GAC members consider general safeguards for new gTLDs enough and we, along with other countries in the world, dissent.

Given the lack of common ground on GIs across different jurisdictions, and the possibility that the registry of .vin and .Wine might be a corporation under a national regulatory regime which does not guarantee sufficient protection for GIS, the general safeguards fall short in granting effective protection to GI right holders. Safeguards 2, 5 and 6 refer to applicable law, which is generally construed to be the law of the country of establishment of the service provider.

Having been able to agree on a series of other complex and legally challenging issues in the GAC (eg: protection of lGOs names and acronyms, of places Within countries, of professional services, or strings with a high risk of cyberbullying...), we have not yet agreed a definite and consensual advice on the gTLDs .vin and .wine. The legal and political study recommended by the GAC in the Buenos Aires Communique can maybe enlighten you on the high sensitivity and economic value of the matter, but the fact remains that the current decision making procedure at GAC does not allow us to conclude on the matter.

This is why we encouraged interested parties to negotiate the terms of protection of GIs under those gTLDs with a view to inserting them in the prospective registry contracts. It has done so with the protection afforded to country names and ISO codes related to country names and to a certain extent, with the names of the International Olympic Committee and the International Red Cross and Red Crescent Movement through the Applicant Guidebook. It could follow suit with GIS, with even more legal reasons to do this.

At this point, it would be pertinent to comment on the letter the Australian Government sent to you setting out its position on .vin and .wine It is certainly true that the legal framework for GIs was developed for trade in goods, but international legislation, notably the TRIPS agreement, forbids any use of the GI in the presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin or any other use that constitutes an act of unfair competition. That is not restricted to bottle labels or adverts, and certainly encompasses the use of GIs under an unmistakably specific TLD such as .vin or .wine.

The abovementioned letter also claims that GIs are protected territory by territory and that there is no consensus on their intemational protection. A11 the foregoing discredits that statement. Furthermore, affording GIs adequate safeguards against a proven and high risk of abuse of their reputation in .vin and .Wine does not entail any renegotiation of TRIPS or other international agreements, but applying its provisions to the assignment and use of domain names. In this regard, we are of the opinion that principles of protection of GIs translate into the on-line world. Otherwise, there would be a huge void as regards any activity carried on on-line since all the treaties negotiated before the Internet era or that do not include specific rules for the Internet would not be applicable.

Once more, we wish to assure the ICANN Board. that European countries (EU, Switzerland and Norway) present in the GAC give a very high priority to these Consultations under the multi-stakeholder approach defined by ICANN, paying due regard to national law and the rights of legitimate title holders in the sphere of geographical indications. We believe that pursuing enhanced dialogue between interested parties is the way to find a prompt and adequate solution for the delegation of .vin and wine.

Therefore, the EU recommends putting the delegation of these new gTLDs on hold until the foregoing bilateral negotiations between GI right holders and applicants reach a successful outcome.

In the event these such necessary negotiations are effectively undermined of prevented for any reason, we would conclude that the Board has no option other than to reject the applications because the harm their operation as TLDs may cause to wine GI right holders, producers and consumers worldwide. Those strings could be applied for when the international talks on the furtherance of Part H, Section 3 of the TRIPS Agreement render more positive results.

A copy of this letter is sent in parallel to the Australian GAC delegation.

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