Posted on 2/4/2019 3:47:08 PM By Colin T.J. O’Brien

On January 23, 2019 INTA submitted its comments on Geographic Names at the Top Level to ICANN.  These comments (which can be found here: ICANN link) were co-drafted by several members of INTA’s Internet Committee, including myself.

The issue of how to protect geographic names has been contentious at ICANN and has now broken down into two general factions.  One faction, lead by representatives of governments and regional bodies, has led the push for more extensive preventative measures including an expansion of geographic terms and their permutations which are to be prohibited from registration unless explicit approval is given by relevant government agencies.  The other faction, led by the Intellectual Property Constituency and registrations, believes that the current curative measures currently in place (Legal Right Objections, Rights Protection Mechanisms and Contractual Commitments) sufficiently protect the rights of governments and provide an even playing field for parties that wish to register domains that are related to their brands without the added layer of government bureaucracy.

INTA’s position on this divide is clear:
  • "INTA reiterates its position 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 country or region has no legal basis, whether under agreed principles of international law or national sovereignty. The express recognition of private legal ownership rights in trademarks, trade names and geographical indications by sovereign states and by international treaties contradicts any governmental claim to exclusive rights in geographic domain names. No interpretation of the public interest as it relates to ICANN policy provides justification for disregarding the established international legal framework as it applies to trademarks and geographical indications of origin. Such an approach is inconsistent with the legal obligations of the 176-member states of the Paris Convention under Article 6 and in this regard would not be upheld by the national courts of those countries. Moreover, ICANN has acknowledged its obligations to operate within this body of law."
The question of how to deal with geographic names on the top-level of domains has become a major roadblock to a new round of generic top-level domains (“gTLDs”).  As a result, there is a pent-up demand for new gTLDs that needs to be addressed.  ICANN should heed the comments of INTA, the Intellectual Property Constituency and concerned registries and should agree that the current curative measures in place are sufficient to protect the interest in geographic names that parties may have.  It is time for a new round of gTLD applications and ICANN needs to make it happen.