LEX VINI

Why Would Wine Industry Support .wine TLD?

On Saturday, June 21, 2014, the 50th session of ICANN meetings opened up in London.  ICANN, the Internet Corporation for Assigned Names and Numbers, is the non-profit organization that coordinates the Internet’s global domain system.  One of the issues addressed at the London meetings was the ongoing issue of the new Top Level Domains (TLDs) for .wine and .vin and issues being pressed by wine regions and various governments as to the lack of protection afforded to appellations or “geographical indications” (GIs) under the new system for establishing TLDs.

As a bit of background, several years ago ICANN thought it would be a good idea to have new TLDs other than “.com” to better organize the Internet around different subject areas.  In order to do this, ICANN established a system to sell control of these new TLDs to registrars who would then control the use of the respective TLD.  However, as any trademark owner can tell you, the Internet and second-level domains under a TLD (e.g., apple.com is a second level domain under .com) create a sewer for trademark misappropriation and can cost trademark owners tens or hundreds of thousands of dollars a year in enforcement costs.  Accordingly, the idea of new TLDs was not strongly supported by many trademark owners as most found the “.com” TLD to work just fine and many viewed new TLDs as simply additional venues in which they needed to defend their trademarks from misuse as second-level domains.

In order to address the concerns of trademark owners, ICANN devised the Trademark Clearinghouse (“TMCH”).  Under the provisions of the TMCH, owners of registered trademarks apply to have their trademark registered so that when a new TLD is recognized the trademark owner has the opportunity to “buy” their own trademark as a second level domain under the TLD before the general public can do so.  In addition to the cost of buying one’s own trademark as a second level domain name, there are also fees for the privilege of being registered with the TMCH so that you can buy your own trademark before someone else can.

So now we turn to the issue and controversy of GIs and .wine and .vin.  Under the provisions of the international General Agreement on Tariffs and Trade (“GATT”) Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) GIs are recognized as intellectual property rights on the same level with trademarks.  Examples of US GIs for wine include Napa Valley, Santa Barbara and Long Island.  Despite the fact that GIs are recognized as intellectual property on par with trademarks, ICANN failed to account for any protections for GIs in its scheme for new TLDs.  Accordingly, many wine region associations from around the world, including Napa Valley Vintners, Santa Barbara Vintners and the Long Island Wine Council, as well as many governments which strongly back their regional wine associations, have objected to the recognition of the TLDs .wine and .vin without providing GIs with the same safeguards provided to trademarks.

Notably, the National Telecommunications & Information Administration (“NTIA”), an agency of the U.S.  Department of Commerce which represents the U.S. Government before ICANN and at the meetings taking place in London, is not in support of providing any additional protections to GIs to put them on par with trademarks in being protected from domain name poachers under the .wine and .vin TLDs.  At the London meetings, various European governments pushing for GI protections under the .wine and .vin TLDs noted that the issue is an international one and that wine regions from around the world stood to benefit from such protections, and also noted that U.S. wine regions also supported this position.  It is reported that in response to this, the representative from NTIA stated that these are only three of thousands of U.S. “wineries.”

Sadly, this lack of knowledge and understanding of the U.S. wine industry demonstrated by the U.S. government representative at an international meeting demonstrates how little consideration the U.S. government has for the wine industry on this topic.  Napa Valley Vintners has 500 winery members,  Santa Barbara Vintners has 129 winery and vineyard members and the Long Island Wine Council has 48 winery members.  Thus, these associations represent the interests of over 675 wineries and vineyards.  However, the U.S. Government apparently considers this unimportant.

However, even more importantly, and as I question in my subject line: why would the wine industry support the .wine TLD?  As previously mentioned, the new TLDs are not wanted by trademark owners.  In fact, many of our winery trademark clients have either indicated they will begrudgingly protect only their most important trademarks from poaching under .wine and .vin, or will not take part at all, simply because there is no interest in .wine and .vin.  Furthermore, while Wine Institute has somewhat waded into the fray involving the .wine TLD and GIs and has expressed its concern for protection of GIs due to the use of semi-generic terms (e.g., port) by Wine Institute members, it has simultaneously stated that it “takes no position on the disposition of a .wine or .vin gTLD.”  Why?  Presumably because there is no outcry or need for the .wine or .vin TLDs and many Wine Institute members maintain large trademark portfolios and have no interest in paying large sums of money to buy their own trademarks as second level domains under these TLDs.

So why is the U.S. Government pushing for the .wine and .vin TLDs?  One can only assume that it is because it is placing the importance of the technology industry and the parties trying to become registrars for these TLDs above the importance of the wine industry and its members.  Why else would the U.S. government send a representative to speak on the .wine issue with so little knowledge and understanding of the wine industry?

The take away for our readers is that if you have no need for the .wine or .vin TLD,  have no interest in paying to buy your trademark under these TLDs, and don’t want to see your appellation name stolen under these TLDs,  let your representatives and senators know this and perhaps it is not too late to prevent these TLDs from going into effect.  Otherwise, if the TLDs move forward you will need to either protect your brand in the TMCH or hope that no one is interested in registering your brand name as a second level domain name under .vin or .wine.  You will also need to hope that the second level domain for your appellation is not registered by one of your competitors, a retailer, or some other party with bad intent.

For further information or assistance on trademark protection or protection in the TMCH, contact Scott Gerien at sgerien@dpf-law.com.

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