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Wine gTLDs get a pass as GAC fails to agree

Kevin Murphy, September 12, 2013, Domain Registries

Applicants for wine-related gTLDs will no longer be opposed by the Governmental Advisory Committee, it has emerged.

Writing to ICANN chair Steve Crocker this week, GAC chair Heather Dryden said that the GAC had failed to reach an agreement on whether to issue formal Advice against the applications.

Three .wine applicants and one .vin applicant are affected.

Some governments are concerned about strings at the second level because quite often a word many people associate primarily with a type of wine is also the protected name of the wine-producing region.

Champagne is probably the best-known example of this.

Nevertheless, the GAC couldn’t reach agreement on whether to provide formal advice to ICANN on this topic, so the applications will be free to proceed along the new gTLD program’s track.

In the wake of .amazon, IP interests turn on the GAC

Kevin Murphy, July 19, 2013, Domain Policy

Intellectual property interests got a wake-up call at ICANN 47 in Durban this week, when it became clear that they can no longer rely upon the Governmental Advisory Committee as a natural ally.

The GAC’s decision to file a formal consensus objection against Amazon’s application for the .amazon gTLD prompted a line of IP lawyers to queue up at the Public Forum mic to rage against the GAC machine.

As we reported earlier in the week, the GAC found consensus to its objection to .amazon after the sole hold-out government, the United States, decided to keep quiet and allow other governments to agree.

This means that the ICANN board of directors will now be presented with a “strong presumption” that .amazon should be rejected.

With both previous consensus objections, against .africa and .gcc, the board has rejected the applications.

The objection was pushed for mainly by Brazil, with strong support from Peru, Venezuela and other Latin American countries that share the Amazon region, known locally as Amazonas.

During a GAC meeting on Tuesday, statements of support were also made by countries as diverse as Russia, Uganda and Trinidad and Tobago.

Brazil said Amazon is a “very important cultural, traditional, regional and geographical name”. Over 50 million Brazilians live in the region, he said.

The Brazilian Congress discussed the issue at length, he said.

The Brazilian Internet Steering Committee was also strongly against .amazon, he said, and there was a “huge reaction from civil society” including a petition signed by “thousands of people”.

All the countries in the region also signed the Montevideo Declaration (pdf), which resolves to oppose any attempts to register .amazon and .patagonia in any language, in April.

It doesn’t appear to be an arbitrary decision by one government, in other words. People were consulted.

The objection did not receive a GAC consensus three months ago in Beijing only because the US refused to agree, arguing that governments do not have sovereign rights over geographic names.

But prior to Durban, without changing its opinion, the US said that it would not stand in the way of consensus.

It seems that there may have been bigger-picture political concerns at play. The NTIA, which represents the US on the GAC, is said to have had its hands tied by its superiors in Washington DC.

Did the GAC move the goal posts?

With the decision to object to .amazon already on the public record before the GAC’s Durban communique was formally issued yesterday, Intellectual Property Constituency interests had plenty of time to get mad.

At the Public Forum yesterday, several took to the open mic to slam the GAC’s decision.

Common themes emerged, one of which was the claim that the GAC is retroactively changing the rules about what is and is not a “geographic” string for the purposes of the Applicant Guidebook.

Stacey King, senior corporate counsel with Amazon, said:

Prior to filing our applications Amazon carefully reviewed the Applicant Guidebook; we followed the rules. You are now being asked to significantly and retroactively modify these rules. That would undermine the hard-won international consensus to the detriment to all stakeholders. I repeat, we followed these rules.

It’s true that the string “amazon” is not on any of the International Standards Organization lists that ICANN’s Geographic Names Panel used to determine what’s “geographic”.

The local-language string “Amazonas” appears four times, representing a Brazilian state, a Colombian department, a Peruvian region and a Venezuelan state; Amazon isn’t there.

But Amazon is wrong about one thing.

By filing its objection, the GAC is not changing the rules about geographic names, it’s exercising its entirely separate but equally Guidebook-codified right to object to any application for any reason.

That’s part of the Applicant Guidebook too, and it’s a part that the IPC has never previously objected to.

Amazon was not alone making its claim about retroactive changes. IPC president Kristina Rosette, wearing her hat as counsel for former .patagonia applicant Patagonia Inc, said:

Patagonia is deeply disappointed by and concerned about the breakdown of the new gTLD process. Consistent with the recommendations and principles established in connection with that process, Patagonia fully expected its .patagonia application to be evaluated against transparent and predictable criteria, fully available to applicants prior to the initiation of the process.

Yet, its experience demonstrates the ease with which one stakeholder can jettison rules previously agreed upon after an extensive and thorough consultation.

That’s not consistent with the IPC’s position.

The IPC just last month warmly welcomed (pdf) the GAC’s Beijing advice, stating that the after-the-fact “safeguards” it demanded for all new gTLDs should be accepted.

Apparently, it’s okay for the GAC to move the goal posts for gTLD applicants when its advice is about Whois accuracy, but when it files an objection — perfectly compliant with the GAC Advice section of the Guidebook — that interferes with the business objectives of a big trademark owner, that’s suddenly not cool.

The IPC also did not challenge the GAC Advice process when it was first added to the Applicant Guidebook in the April 2011 draft.

At that time, the GAC had responded to intense lobbying by IP interests and was fighting their corner with the ICANN board, demanding stronger trademark protections in the new gTLD program.

If the IPC now finds itself arguing against the application of the GAC Advice rule, perhaps it should consider whether speaking up earlier might have been a good idea.

Rosette tried to substantiate her remarks by referring back to previous GAC advice, specifically a May 26, 2011 letter in which she said the GAC “formally accepted” the Guidebook’s definition of geographic strings.

However, that letter (pdf) has a massive caveat. It says:

Given ICANN’s clarifications on “Early Warning” and “GAC Advice” that allow the GAC to require governmental support/non-objection for strings it considers to be geographical names, the GAC accepts ICANN’s interpretation with regard to the definition of geographic names.

In other words, “The GAC is happy with your list, as long as we can add our own strings to it at will later”.

Rosette’s argument that the GAC has changed its mind, in other words, does not hold.

It wasn’t just IP interests that stood up against the .amazon decision, however. The IPC found an unlikely ally in the Registries Stakeholder Group, represented at the Public Forum by Verisign’s Keith Drazek.

Drazek sought to link the “retroactive changes” on geographic strings to the “retroactive changes” the GAC has proposed in relation to the so-called Category 1 strings — which would have the effect of demanding that hundreds of regular gTLD bids convert into de facto “Community” applications. He said:

While different stakeholders have different views about particular aspects of the GAC advice, we have a shared concern about the portions of that advice that constitute retroactive changes to the Applicant Guidebook around the issues of sovereign rights, undefined and unexplained geographic sensitivities, sensitive industry strings, regulated strings, etc.

This appears to be one of those rare instances where the interests of registries and the interests of IP owners are aligned. The registries, however, have at least been consistent, complaining about the GAC Advice process as soon as it was published in April 2011.

There’s also a big difference between the substance of the advice that they’re currently complaining about: the objection against .amazon followed the Guidebook rules on GAC Advice almost to the letter, whereas the Category 1 advice came completely out of the left field, with no Guidebook basis to cling to.

The GAC in the case of .amazon followed the rules. The rules are stupid, but the time to complain about that was before paying your $185,000 to apply.

If anyone is trying to change the rules after the fact, it’s Amazon and its supporters.

Is the GAC breaking the law?

Another recurring theme throughout yesterday’s Public Forum commentary was the idea that international trademark law does not support the GAC’s right to object to .amazon.

I’m going to preface my editorializing here with the usual I Am Not A Lawyer disclaimer, but it seems to be a pretty thin argument.

Claudio DiGangi, secretary of the IPC and external relations manager at the International Trademark Association, was first to comment on the .amazon objection. He said:

INTA strongly supports the recent views expressed by the United States. In particular, that it does not view sovereignty as a valid basis for objecting to the use of terms, and we have concerns about the effect of such claims on the integrity of the process.

J Scott Evans, head of domains at Yahoo, who left the IPC for the Business Constituency recently (apparently after some kind of disagreement) was next. He said:

There is no international recognition of country names as protection and they cannot trump trademark rights. So giving countries a block on a name violates international law. So you can’t do it.

There were similar comments along the same lines.

Heather Forrest, a senior lecturer at an Australian university and former AusRegistry employee, said she had conducted a doctoral thesis (available at Amazon!) on the rights of governments over geographic names, with particular reference to the Applicant Guidebook.

She told the Public Forum:

My study was comprehensive. I looked at international trade law, unfair competition law, intellectual property law, geographic indications, sovereign rights and human rights. As the board approved the Applicant Guidebook, I completed my study and found that there is not support in international law for priority or exclusive right of states in geographic names and found that there is support in international law for the right of non-state others in geographic names.

Kiran Malancharuvil, whose job until recently was to lobby the GAC for special protections for her client, the International Olympic Committee, now works for MarkMonitor. Calling for the ICANN board to reject the GAC’s advice on .amazon, she said at the Public Forum:

To date, governments in Latin America including the Amazonas community countries have granted Amazon over 130 trademark registrations that have been in continuous use by Amazon since 1994 without challenge. Additionally, Amazon has used their brand within domain names including some registered by MarkMonitor and including registrations in Amazonas community ccTLDs without objection.

Amazonas community countries and all other nations who have signed the TRIPS agreement have obligated themselves to maintain and protect these trademark registrations. Despite these granted rights, members of the community signed the Montevideo declaration and resolved to reject Amazon and Patagonia in any language as well as any other top-level domains referring to them. This declaration appears inconsistent with national and international law.

Having read TRIPS — the World Trade Organization’s Trade Related Aspects of Intellectual Property Rights treaty — this morning, I’m still none the wiser how it relates to .amazon.

It’s a treaty that sought to create some uniformity in how trademarks and other types of intellectual property are handled globally, and domain names are not mentioned once.

As far as I can tell, nobody is asking Amazon to change its name and nobody’s trying to take away its trademarks. Nobody’s even trying to take away its domain names.

If the international law argument is simply that the GAC and/or ICANN cannot prevent a company with a trademark from getting its mark as a TLD, as Yahoo’s Evans suggested, it seems to me that quite a lot of the new gTLD program would have to be rewritten.

We’re already seeing Legal Rights Objections in which an applicant with a trademark is losing against an applicant without a trademark.

Is that illegal too? Was it illegal for ICANN to create an LRO process that has allowed Donuts (no trademark) to beat Express LLC (with trademark) in a fight over .express?

What about other protections in the Guidebook?

ICANN already bans two-character gTLDs, on the basis that they could interfere with future ccTLDs — protecting the geographic rights of countries that do not even exist — which disenfranchises companies with two-letter trademarks, such as BT and HP.

What about 888, the poker company, and 3, the mobile phone operator? They have trademarks. Should ICANN be forced to allow them to have numeric gTLDs, despite the obvious risks?

The Guidebook already bans country names outright, and says thousands of other geographic terms need government support or will be rejected. Is this all illegal?

If the argument is that trademarks trump all, ICANN may as well throw out half the Guidebook.

Now what?

Unlike .patagonia, which dropped out of the new gTLD program last week (we’ll soon discover whether that was wise), the objection to .amazon will now go to ICANN’s board of directors for consideration.

While the Guidebook calls for a “strong presumption” that the board will then reject the application, board member Chris Disspain said yesterday that outsiders should not assume that it will simply rubber-stamp the GAC’s advice.

In both previous cases, the outcome has been a rejection of the application, however, so it’s not looking great for Amazon.

GAC to kill off .amazon

The Governmental Advisory Committee has agreed to file a consensus objection against Amazon’s application for .amazon.

The decision, which came this morning during a GAC session at the ICANN meeting in Durban, also applies to the company’s applications for .amazon in non-Latin scripts.

The objection came at the behest of Brazil and other Latin American countries that claim rights to Amazon as a geographic term, and follows failed attempts by Amazon to reach agreement.

Brazil was able to achieve consensus in the GAC because the United States, which refused to agree to the objection three months ago in Beijing, had decided to keep mum this time around.

The objection will be forwarded to the ICANN board in the GAC’s Durban communique later in the week, after which the board will have a presumption that the .amazon application should be rejected.

The board could overrule the GAC, but it seems unlikely.

It’s the second big American brand to get the GAC kiss of death after Patagonia, which withdrew its application for .patagonia last week after the US revealed its hands-off approach for Durban.

Both Amazon and Patagonia slipped through the standard Geographic Names Panel check because they’re trans-national regions, whereas the panel used lists of administrative divisions to determine whether strings were geographic.

Amazon the company was named after the region or river in Latin America, which was in turn named after a culture of female warriors originating from, according to Herodotus, Ukraine.

It’s not known whether Ukraine had a position on the objection and Herodotus was unavailable for comment.

ICANN says Article 29 letter does not give EU registrars privacy opt-out

Kevin Murphy, July 15, 2013, Domain Policy

Registrars based in the European Union won’t immediately be able to opt out of “illegal” data retention provisions in the new 2013 Registrar Accreditation Agreement, according to ICANN.

ICANN VP Cyrus Namazi on Saturday told the Governmental Advisory Committee that a recent letter from the Article 29 Working Party, which comprises the data protection authorities of EU member states, is “not a legal authority”.

Article 29 told ICANN last month that the RAA’s provisions requiring registrars to hold registrant data for two years after the domain expires were “illegal”.

While the RAA allows registrars to opt out of clauses that would be illegal for them to comply with, they can only do so with the confirmation of an adequate legal opinion.

The Article 29 letter was designed to give EU registrars that legal opinion across the board.

But according to Namazi, the letter does not meet the test. In response to a question from the Netherlands, he told the GAC:

We accept it from being an authority, but it’s not a legal authority, is our interpretation of it. That it actually has not been adopted into legislation by the EU. When and if it becomes adopted then of course there are certain steps to ensure that our contracted parties are in line with — in compliance with it. But we look at them as an authority but not a legal authority at this stage.

It seems that when the privacy watchdogs of the entire European Union tell ICANN that it is in violation of EU privacy law, that’s not taken as an indication that it is in fact in violation of EU privacy law.

The European Commission representative on the GAC expressed concern about this development during Saturday’s session, which took place at ICANN 47 in Durban, South Africa.

Governments kill off Patagonia’s dot-brand bid

Kevin Murphy, July 11, 2013, Domain Policy

The clothing retailer Patagonia has withdrawn its application for .patagonia after it became clear that ICANN’s Governmental Advisory Committee was unlikely to allow it.

Controversial from the outset, Patagonia’s dot-brand came under fire from governments including Argentina and Chile because the company is named after a large region of Latin America.

The GAC couldn’t find a consensus for a full-on objection to the bid, however, because the US government refused to agree that governments should have rights over such geographic terms.

However the US said last week that it would stand neutral on .patagonia and other geographic-flavored applications at next week’s ICANN meeting in Durban, smoothing the path to GAC consensus.

A GAC consensus objection would have spelled certain death to the application.

Amazon’s .amazon application is in exactly the same position as .patagonia was. Unless the company can come to some kind of arrangement with Brazil and over governments it may suffer the same fate.