<.wine> gTLD on the Horizon; Protect your Brand Name

In 2013, the Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization responsible for managing the Internet’s domain identifiers, began rolling out new generic top-level domains (“gTLDs”).  The most popular gTLD is <.com>. Specific domain names are registered under a specific gTLD, e.g., <gallo.com>.

However, ICANN believed that in time the <.com> gTLD would begin running out of domain name options, and that the Internet could be better organized if gTLDs were created around subject matter, such as <.plumber>, <.church>, <.porn> and <.wine>.  Therefore, ICANN decided to introduce these new gTLDs by selling them to third-party domain name registrars to register and operate for $185,000 each.  ICANN received applications for over 1,900 new gTLDs and many of them have gone into active status.

Many have questioned the need or practicality of these new gTLDs believing ICANN’s real motivation being to raise money.  Indeed, Esther Dyson, the founding chairperson of ICANN, wrote that the gTLD expansion “will create jobs [for lawyers, marketers and others] but little extra value.”  Many believe that these new gTLDs will add no more value than did the introduction of gTLDs like <.aero> or country code TLDs such as <.tv> (Tuvalu, in case you wondering).  In fact, many feel that this is simply another opportunity for domain name registrars and unscrupulous domain name pirates to make money at the expense of trademark owners.

Since domain name high jacking has been fairly prevalent with the <.com> gTLD, it was determined that some preventative measures should be available for trademark owners to obtain their trademarks as domain names within these new gTLDs before the gTLDs are introduced.  Enter the Trademark Clearinghouse (“TMCH”).

The TMCH is a place where trademark owners can “register” their trademark rights in order to obtain their trademarks in domain names for gTLDs before the public has a chance to do so.  How does it work?  A trademark owner goes to the web site for the TMCH located here.  The trademark owner then fills out an application, provides evidence of a trademark registration in a country of the world, along with evidence of use of the mark, and then pays a fee of $150 per trademark per year of registration.

Assuming the trademark owner provides all the correct information, the trademark owner is then provided with a special authentication key that it can then use to “buy” a domain name identical to its trademark before the general public during a special Sunrise period when new gTLDs are introduced.  As recently evidenced with the registrar for the new gTLD for <.sucks>, which charged a Sunrise registration fee of $2,499, this can be viewed merely as an attempt to extort trademark owners.  However, other gTLDs have offered Sunrise period registration fees for as low as $20.

So why does this matter to wineries? There are two gTLDs that have been applied for specific to the wine industry — <.wine> and <.vin>.  Both of these gTLDs have been awarded to the largest, most organized and most financially-backed registrar of new gTLDs, Donuts.  The <.wine> and <.vin> gTLDs have been held up in procedural wrangling with the EU because wine appellations of origin could not be protected in the TMCH and there were fears that domain names such as <champagne.wine> or <bordeaux.vin> would be swiped up by parties for individual benefit or misuse.  However, we have it on good authority that these disputes have been worked out and that we can expect the opening of the <.wine> and <.vin> Sunrise periods possibly as early as fall of 2015.

Therefore, all brand owners that are interested in securing the <.wine> and/or the <.vin> domain names for their brands during the Sunrise period should move with diligence in registering their trademarks in the TMCH so that they are ready with their authentication keys once the Sunrise periods open.  Again, is this necessary?  That depends on whether you think that <.wine> and/or <.vin> will catch on with consumers for locating web sites for wine brands.  The gTLDs could go the same way as <.aero> and die on the vine.  However, the risk is if the gTLDs do catch on, then brand owners could be left fighting or paying domain name pirates to get back their <trademark.wine> domain names, which will cost thousands of dollars more than registering in the Sunrise period.  So, the question of whether to register your brand in the Sunrise period is a business decision based on a gamble as to whether you think <.wine> and/or <.vin> will succeed or fail.

For those wineries not wanting to deal with the TMCH registration process, contact your trademark counsel for assistance.  This will certainly add to your costs, but it will relieve you of the burden of maneuvering through the TMCH registration process.  DP&F is offering this service on a flat fee basis in partnership with Corsearch, an authorized TMCH agent.  For more information please contact Scott Gerien via email.

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 [email protected].