The EU is currently revising its legislation on the protection of geographical indications (GIs), an intellectual property right (IPR) that is used similarly to trademarks to protect products with certain distinctive qualities. In the case of GIs, these need to have a specific geographical origin and possess qualities or a reputation that are due to that origin (think Bordeaux wines or Boleslawiec pottery). GIs are different from trademarks, as these do not have specific owners but ‘beneficiaries’. Any producer who complies with the GI specification and comes from the designated geographical area can benefit from the registered GI.
The ongoing EU GI reform includes provisions extending GI protection to domain names: namely to ensure that GIs are effectively protected within alternative dispute resolution (ADR) procedures established within European domain name registries, but also by including additional “innovative” ways to allow the European Union Intellectual Property Office (EUIPO) to monitor the registration of domain names which contain GIs that are in the process of being registered. The latter would mainly be ensured by the establishment of a so-called “domain name information and alert system”, run by the EUIPO, and by obliging EU registries to share “all necessary data” with the EUIPO, for enforcement purposes.
Despite its noble objectives to protect European cultural heritage, the EU GI reform completely disregards the importance of maintaining access to the essential digital infrastructure, the importance of domain names for establishing one’s digital identity online, and includes far-reaching obligations to share a vast amount of data with an agency that has no business in law enforcement. Some discussions are also heading towards including more registries in the scope, threatening the global multistakeholder internet governance as a result.
Most importantly, however, the far-reaching domain-related provisions in the EU GI reform do not have any meaningful justification and are based on outdated assumptions and a lack of evidence of any widespread issues with GI protection in the EU domain space.
Intellectual property rights vs domain names
First of all, it is worth mentioning that domain names are not intellectual property rights (IPRs) and cannot be equated as such. If somebody holds the exclusive right to a fictional trademark called “Pears Inc” this does not mean that the rightsholder has trademarked the use of the word “pear”, or that all other businesses, trademarks and individuals with identical or similar brand names cannot exist. A simple search of the term “pear” in the official EU trademark register yields 34 759 results of registered trademarks containing the term “pear”.
An important piece of trademark protection is the requirement of ‘distinctiveness’ so that your product or brand name is identifiable by consumers. In the case of generic names, like in our fictional Pear Inc example, its distinct feature can be acquired by its association to products that have no immediate claim to its name (e.g. it is an IT company) or by the longstanding use and the branding of the trademark so that consumers learn to associate and differentiate it from competitors on the marketplace. In any case, the circumstances of the use of the trademark are essential for its protection.
Inherent distinctiveness is also important for GIs. It serves as a guarantee of geographical origin, and as such is equivalent to its attributes of quality and reputation. GIs are open-ended rights and should remain available for the communities they are serving. Any producer from the associated region who complies with the quality specification should be able to benefit from the registered GI and its distinctive reputation that is so attractive for consumers. Unlike trademarks, GIs are not just labels but also quality schemes, subject to specific national monitoring and enforcement procedures.
Domain names are the first and foremost piece of technical infrastructure and are essential for the internet to function. In a way, they also exist for the purposes of ‘distinctiveness’ but for completely different reasons than trademarks or GIs. Their distinctiveness is essential for the technical functioning of the internet so that all users are navigated to the right resources and all communication is directed to the right recipients. This is why there cannot be two or more identical domain names, in the same way that there cannot be two identical addresses on a map. This makes domain names a limited resource, especially in the case of 34 759 identically spelled trademarks containing the same term “pear” but also in the case of geographical regions that would be interested in a domain name containing their geographical region for the purposes of selling their local produce. The same goes for information on a local school or an official website for a local municipality. All of the abovementioned establishments have a legitimate interest in the similar domain name.
When IPR enforcement enters the domain of essential infrastructure, such as the Domain Name System (DNS), other interests and needs need to be taken into consideration in a careful balancing act. Domain names are not IPRs, and the exclusive rights of IPR holders do not automatically take precedence over all other interests when it comes to the ownership of domain names.
What does the EU GI reform say about domain names?
One of the aims of the EU GI reform is to strengthen GI protection and to combat counterfeiting more effectively. For these purposes, the proposals have explicitly expanded GI protection to domain names. Effectively this is done by prohibiting the use of a domain name that has been registered “without rights or legitimate interest” in the geographical indication. Rightfully so, the EU GI reform at least recognises the existence of numerous alternative dispute resolution (ADR) procedures established for resolving domain name related disputes (including for IPR enforcement purposes) out of court, and mandates the recognition of GI rights as an invokable right within these ADR processes. However, the proposals go further and mandate the establishment of a so-called “domain name information and alert system” that should inform GI applicants about the availability of the GI as a domain name, and provide them with information once a domain name that is conflicting with their GI is registered. Receiving such alerts would allow producers to take “appropriate action more quickly and effectively”, and should be expanded to both identical and similar domains. Some of the amendments as suggested by Members of the European Parliament within the ongoing discussions even go one step further and mandate the EUIPO to monitor the registration of domain names which could conflict with the GI names on a general basis.
There is an underlying sense of urgency but also an assumption that IPRs, including GIs, cannot be protected online, especially in Europe. However, this is not only a misconception but also not based on any evidence that there is a prevalent issue with GI enforcement in the European domain space. As one of the latest independent studies has shown, the number of domain name related disputes over a GI within all 27 EU national domain name registries has been marginally low in the last two decades: including both ADR decisions, as well as judicial proceedings. In the majority of identified disputes, the GI holder was able to successfully enforce their rights within the EU domain name space and limit the use of disputed domain names.
On top of that, the proposals to establish a domain name information and alert system completely disregard the existing tools and public services available to everyone to check the availability of registered domain names, as well as other relevant registration data. All registries and registrars maintain public databases for the exact same purpose to check the availability of a domain name for registration virtually by anybody with an internet connection. Some even do so in a centralised manner to check across numerous top-level domains. There is no justification as to why such databases need to be duplicated by the EUIPO, or why existing access and disclosure protocols within the DNS are not sufficient for GI enforcement online.
Furthermore, European domain registries allow parties with legitimate interest (including IPR holders) to request non-public registration details (such as the contact details of a domain holder) for necessary enforcement reasons (e.g. to be able to initiate the appropriate ADR procedure or serve legal documents).
There are also concerns over the competences of the EUIPO for not only being responsible for the GI applications in the first place, but also in terms of its legal basis and proportionality for requiring data from all EU ccTLDs domain zones for enforcement monitoring purposes.
Since GIs have no owners, it is also unclear on which basis a producer group needs to be informed of all registered domain names that may contain a GI, since they do not ‘own’ the GI. Even for legitimate users of the GI, it is often impossible to identify or predict whether an IPR infringement takes place at the time of registering a domain name, as domain names are not websites. The subsequent use of a domain name, especially in connection to associated services (such as a website) determines the levels of unlawful use, if any. There is no justification as to why the use of domain names online should be subject to more stringent rules than open-ended GIs offline.
In a nutshell, it seems that the EU GI reform firstly completely disregards at least the last 30 years of development of the Domain Name System, along with numerous policies and procedures available for the purposes of effective IPR enforcement within the EU domain space. Most importantly, it does so without any justification beyond general statements and an apparent lack of evidence.
The European Commission’s Impact Assessment, which was carried out in the pre-legislative phase, gives in-depth explanations of well-known cases outside the EU domain name space (e.g. champagne.co, rioja.com, gorgonzola.blue) where GI holders experienced difficulties in enforcing their GI rights within the global domain space. The Impact Assessment did not identify any European cases with a similar level of difficulty for GI protection enforcement within the EU domain space. However, the proposals to expand GI protection to the domain name space only concern EU national registries. Whilst the discussions in the European Parliament may go in the direction of expanding the scope of the reform to “other” domain registries established in the EU, this will create additional hurdles and essentially may have the potential to undermine global internet governance.
Impact on internet governance
It is apparent from the European Commission’s Impact Assessment that the main driving force behind expanding the GI protection to domain names seems to be the difficulties to enforce GI protection within the Universal Dispute Resolution Policy (UDRP) that is designed to resolve trademark-related disputes over domain names at a global level. The UDRP is administered amongst others by WIPO and is mandatory for all generic top-level domains (gTLDs) that are subject to policies developed at ICANN level. There has been a decades-long discussion on the protection (or lack of) of GIs within the UDRP, as effectively the UDRP only recognises trademarks as a valid right to bring a claim against a domain name holder. So far the UDRP is only available for trademark-related domain name disputes.
For national registries, such as .eu and .se, the UDRP is not mandatory but can serve as a guidance to national ADR systems. In fact, according to the official WIPO statistics, only 2 EU national county-code registries have adopted the UDRP in its original form, without any modifications: .ro and .cy.
The flexibility of national country-code top-level domain registries has allowed GI rights to be recognised in several national ADR procedures, which is a welcome step and can only be encouraged within the EU and beyond.
However, the fact that the EU GI reform suggests including the DNS in its scope and has based this solely on challenges with the UDRP fundamentally misses the mark. Changes imposed on national ccTLDs will not have any impact on the UDRP and will not solve issues with enforcing GI rights in cases such as rioja.com, gorgonzola.blue and champagne.co. Ironically, simply including gTLDs under the scope of the EU GI reform will also not have any effective impact on the UDRP, but will only create a conflict between legislation and ICANN contracts, as without any effective changes to the UDRP, EU gTLDs will find themselves in a legal conundrum and would most likely be forced to withdraw from the UDRP altogether.
This will effectively strip EU GI holders (and also trademark owners) from out-of-court dispute settlement opportunities, increasing litigation costs and leaving GI enforcement in a more dire state at global level than it is now.
Initiating discussions within the multistakeholder model on the UDRP changes is the way forward, without hardballing the way via legislation that can lead to even more fragmentation and force EU gTLDs out of the global system.
There is no doubt that GIs need protection both online and offline. However, the fact of simply equating GIs with systems and procedures that are designed for trademarks disregards the fundamental differences and strengths of GI protection that offer flexibility to its beneficiaries. As a result, the proposed changes threaten to disadvantage local producers from a meaningful level of protection online. The EU GI reform bases its recommendations to extend GI protection to the European domain space on the lack of evidence, while disregarding the global nature of the internet.