INTA Bulletin

December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

Rights Protection Mechanisms, Access to Domain Registrant Data, and Use of Geographic Terms Continue to Dominate Internet Policy

Fall 2017 was a busy time for Internet advocacy as INTA continues to share the results of the new gTLD cost impact study to interested parties.

On October 18‒19, INTA Senior Director for Internet Policy, Lori Schulman, participated in the Organization for an International Geographical Indications Network’s (oriGIn’s) 2017 Biannual Meeting in Treviso, Italy. Ms. Schulman gave a presentation titled “Legal Certainty in the Domain Name System,” focusing on the impact study and the remedies that trademark owners have through rights protection mechanisms (RPMs) at ICANN. oriGIn, a not-for-profit and non-governmental organization (NGO) based in Geneva, was established in 2003 and is a global alliance of geographical indications (GIs), representing some 500 associations of producers and other GI-related institutions from 40 countries.

Ms. Schulman also presented the results of the impact study to representatives of the American Bar Association (ABA), Intellectual Property Owners (IPO) Association, and American Intellectual Property Association (AIPLA) as part of the Washington, D.C., area IP association meeting on November 6, in Arlington, Virginia.

On October 31, Internet Committee Chair John McElwaine (Nelson Mullins Riley & Scarborough, LLP, USA) presented the results of an impact study to ICANN’s Governmental Advisory Committee (GAC) as part of a panel discussion titled “Rights Protection Mechanisms: Why Should the GAC Care?” at ICANN60, held in Abu Dhabi, UAE, from October 28‒November 3. INTA Board Member Brian Winterfeldt (Winterfeldt IP Group, USA) and Internet Committee Member Susan Payne (Com Laude, UK) were also part of the panel. The presentation yielded a positive result for brand owners with the GAC recognizing in its ICANN60 Communiqué the public policy implications of ICANN’s current RPMs review and the importance of engaging experts, including the WIPO and government agencies at the national level.

Although RPMs are of critical concern to INTA owners, another hot topic that took center stage at ICANN60 included the future of the open WHOIS registrant directory. The implementation of the European General Data Privacy Regulation in May 2018 threatens to change the way brand owners access information thorough the WHOIS database. This information is critical to online trademark enforcement. Possible solutions include a tiered system of access, implementing a code of conduct for data protection and use, or closing WHOIS access altogether. While the nature of WHOIS will inevitably change, the question of how it will change is yet to be clarified. INTA advocates for an accessible, accurate, contactable, and reliable registrant directory system, and the RPMs and WHOIS remain key concerns for trademark enforcement.

Another area of critical concern is how geographic terms are used in domain names. The most prominent example is the disposition of Amazon’s pending .amazon application. The application has been the subject of much controversy as several governments, including those of Argentina, Brazil, and Peru, have objected to the delegation based on the geographic significance of the Amazon rainforest. The ICANN Board has heeded the governments’ concerns and did not award the domain name to Amazon.

Amazon recently prevailed in an Independent Review Panel decision that directed the ICANN Board to reconsider the application and provide a public policy rationale for the refusal of the application. The Board was admonished for failing to follow ICANN’s bylaws and applicant guidebook procedures on the matter. The GAC was criticized for not providing a rationale for its objection. In light of that decision, the ICANN Board has requested additional information from the GAC regarding the public policy rationale for objecting to Amazon’s application. Further, Amazon was provided the opportunity to present its arguments directly to the GAC and a much anticipated follow-up discussion ensued. INTA’s position is that any objection to the use of a geographic term that is determined to be of either national, cultural, geographic, or religious significance to a particular country or region has no legal basis, whether under agreed principles of international law or national sovereignty. A decision regarding .amazon is expected in early 2018.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2017 International Trademark Association