The EU is reforming its legal framework concerning geographical indications (GI) protection and has put forward provisions expanding GI protection to domain names in two recent legislative proposals concerning agricultural products and craft/industrial products. In order to support greater GI protection on the internet, both proposals mandate the European Union Intellectual Property Office (EUIPO) to establish a “domain name information and alert system”.
According to the proposals, the domain name information and alert system is supposed to provide GI applicants with information about the availability of their GI as a domain name; and on an optional basis, alert GI applicants about registrations of domain names that are identical or similar to their GIs. The proposals also oblige EU ccTLDs to provide EUIPO with all relevant information and data in order to run the system.
Since the proposals give unprecedented attention to GI protection within the critical infrastructure space, such as the DNS, it was essential to understand and measure the problem that is being addressed. Is there a significant number of disputes that justifies such a direct legislative intervention with the establishment of a “domain name information and alert system”? 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.
We decided to look into this further and attempt to identify any pain points with GI protection in the EU domain space, especially in light of the fact that the newly-proposed obligations all concern EU ccTLDs only. For these purposes, we commissioned an independent legal study to identify the number of disputes (both judicial and within alternative dispute resolution processes) concerning GI protection within all 27 EU country code top-level domains and .eu.
The results of the study were enlightening on many levels, and provided an insight into the practical difficulties with the implementation of the proposed domain name information and alert system:
- The study showed that a protected GI cannot be automatically compared to domain names without further data processing and assumptions, which undermines the whole purpose of expanding the GI protection to domain names.
- The study identified that a fully automated process would deliver too many false alerts, in particular for GIs that are short and common names and can be included in thousands of domain names, for which the GI applicant has no interest to be made aware of.
- The matching for only identical GI terms to domain names proved to be challenging, without exploring the potential obligation to identify similar domain names to protected GIs. There is a difficulty with identifying protected GIs when it comes to translations in 24 EU languages. The official GI register in the EU does not provide any official translation of the protected names.
For the above mentioned reasons it will be extremely difficult for both domain name registries or the EUIPO to implement the proposed information and alert system.
Most importantly the study shows no justification for legislative intervention in this area, at least not with the proposed establishment of the domain name information and alert system. The number of disputes over domain names including a protected GI is extremely low, with no cases in the majority of Member States.
In total, 22 decisions were identified across all 27 EU Member States over the past two decades, involving a dispute over a domain name containing a protected GI. In the majority of disputes, the domain name in question was either transferred to the rightsholder, deleted or resulted in a cease and desist order to use the domain name. This means that in the majority of cases the GI holder was able to successfully enforce their rights within the EU domain name space.
The study concluded that there were not only an insufficient number of cases to merit a regulatory approach, but also that the proposed legislative measures will fail to achieve their intended effect for the reasons mentioned above.
Read the full study here.