Issue link: http://winesandvines.uberflip.com/i/365438
p r a c t i c a l w i n e r y & v i n e ya r d S e p t e M B e r 2 0 1 4 59 w i n e m a r k e t i n g tion services and blocking registrations to brand owners to prevent registration by third parties of confusingly similar sec- ond-level domains incorporating the owner's trademark. While GIs are technically registerable through the TMCH (if already registered nationally or protected by statute or treaty at the time of TMCH registration), many brand owners argue that the TMCH framework places unfair burdens for monitoring and enforcement directly on them, rather than the domain registrars and registries who control the access to purchase and use these domains. Bring your wallet Running a top-level domain registry requires technical competence and finan- cial backing. In addition to the $185,000 initial fee, successful applicants must pay ICANN a fixed fee of $6,250 per quarter and a $0.25 transaction fee, which kicks in at the 50,000th transaction. For brand owners, registration in the TMCH starts at $150 per trademark per year, to maintain a presence in the data- base (there are volume discounts). But this does not include blocking registration ser- vices (which apply only to identical marks) or the expense of bringing an enforcement proceeding to suspend, can- cel or transfer an infringing domain. One recurring complaint by brand own- ers is that the new gTLD program is a "pay to play" racket of domain registra- tion, trademark protection and enforce- m e n t . T h i s l e a d s t o a n i n c re d i b l e "catch-22" for the brand owner: either purchase every conceivable domain com- bination and pay ongoing fees, or prepare to enforce against each new domain as they are grabbed up by illegitimate registrants. Thus, the argument goes, ICANN and the Trademark Clearinghouse each stand to collect billions of dollars in recurring revenue (including fees from brand own- ers and registrants) at the expense of those who are economically unable to adapt to the new digital landscape. Gis left out in the cold Despite TRIPS, GIs were expressly excluded in the gTLD process from any specific protections beyond those other- wise afforded registered trademarks in terms of eligibility for registration in the Trademark Clearinghouse and in dispute resolution proceedings. Thus GI interests, particularly in the United States and Europe, have voiced concerns and engaged in intense negotia- tions with the registry operators and ICANN to find acceptable solutions to a potentially significant problem for con- sumers and producers alike. From the perspective of GI interests, GIs bring great economic wealth to local regions and nations worldwide. They pro- vide quality products and satisfaction to consumers, who often prefer and proac- tively search for such products as a result of the distinctive qualities and characteris- tics arising from their origin in a particular region of the world. GIs provide a value-add and allow for product differentiation, premium pricing strategies and an overall higher product price point. GIs bolster local rural econo- mies and in many instances preserve, pro- tect and enhance the cultural practices of a given producer region. GI interest groups feel that the structure and operation of the Internet (and ICANN's new gTLD program in particu- lar) undermines the benefits and protec- tions afforded by GIs, and instead increases overall costs and risks to brand owners, producers and consumers, such as fraud and counterfeiting. Counterfeit- ing, in turn, supports societal ills such as human trafficking. Summary In the interest of respect for third-party prior rights — and to prevent infringe- ment of those rights — ICANN considered the timing and legitimacy of assigning the proposed new gTLDs .wine and .vin for more than one year, culminating in a 60-day hold on approval of the .wine and .vin gTLDs to allow the registries and industry stakeholders to negotiate. Early indications are that ICANN will be moving forward with applications for both .wine and .vin. It is expected that the field of applicants will be narrowed from the current three down to a single appli- cant in or around January 2015. PWV Chris Passarelli is senior IP counsel at Dickenson Peatman and Fogarty, where he focuses on intellectual property protection and enforcement in the wine industry. Contact him at cp@dpf-law.com. The new gTLD program leads to an incredible "catch-22" for the brand owner: either purchase every conceivable domain combination and pay ongoing fees, or prepare to enforce against each new domain as they are grabbed up by illegitimate registrants. One recurring complaint by brand owners is that the new gTLD program is a "pay to play" racket of domain registration, trademark protection and enforcement. COLLINWOOD GRAPE CO. 15741 MANDALAY AVE., CLEVELAND, OHIO 44110 216 451 8697 or 216 598 0504 • collinwoodgrape@aol.com www.collinwoodgrape.com We supply quality grapes to the most discriminating wineries. We also supply fresh juices in pails, drums or 275 gal. totes. For the special "Vintners Reserve" we can offer the best grapes. Direct importer of winemaking equipment from Italy. PREMIUM CALIFORNIA GRAPES Specializing in North Coast-Napa, Sonoma, Lake, Mendocino & Sierra Foothills—El Dorado, Amador, Calaveras.