Note: This story has been updated to correct the name of the Government Advisory Committee.
A recommendation made last month by a committee from ICANN, the nonprofit organization that coordinates Internet domains, to reject Amazon.com Inc.’s application for the domain “.amazon” may end up undermining the largest-ever expansion of domains suffixes, which are also known as generic top-level domains (gTLDs).
The Government Advisory Committee of the Internet Corporation for Assigned Names and Numbers (ICANN) recommended at a July meeting in Durban, South Africa, that ICANN’s full board reject the .amazon domain. A group of Latin American countries, including Brazil, Argentina, Chile, Peru, and Uruguay, objected to the online retailer’s use of the gTLD because it refers to a geographic region inhabited by people “with their own culture and identity directly connected with the name.”
The same group objected to an application for the gTLD “.patagonia,” filed by the retailer Patagonia. But the clothing chain withdrew its application before the Durban meeting.
Since the .amazon announcement, brand owners have grown wary and suspicious of the ICANN system for approving gTLDs, which would join the frequently used .com, .org, and .net as web-address suffixes, and could change the way the way average users experience the Internet. Many companies that were interested in applying for gTLDs are now reconsidering, lawyers say. They are troubled that even a company with such a strong trademark as Amazon can face rejection—and disturbed that the rules of the game can change without notice.
“It’s having a chilling effect,” Kenyon & Kenyon partner Michelle Marsh told CorpCounsel.com. “It wasn’t supposed to be this complicated."
When the long process to create new domain suffixes began in 2008—a move that could change both the way people find information on the Internet and how businesses plan and structure their online presence—a complex set of rules was put in place dictating what would be permissible. Included in what became ICANN’s Applicant Guidebook was a list of geographic names, which, if sought by prospective applicants, required letters of non-objection from the relevant government or local authority. Amazon did not appear on the list.
It’s not surprising that the online retailer Amazon.com applied for the .amazon gTLD [PDF], hoping to establish it as “a unique and dedicated platform for Amazon,” as “a further platform for innovation,” and to “support the business goals of Amazon.” In April, the GAC said it would review the application [PDF]. And its recommendation last month to the ICANN board that it reject the .amazon gTLD [PDF] prompted strong reactions from brand owners, who asserted that the committee was essentially changing the rules of the domain game.
“Prior to filing our applications Amazon carefully reviewed the Application Guidebook; we followed the rules,” Amazon senior corporate counsel Stacey King said at an ICANN public forum in Durban after the GAC recommendation was announced. “You are now being asked to significantly and retroactively modify these rules.”
Patagonia’s counsel also weighed in at the forum, saying the company is deeply disappointed by and concerned about the breakdown of the new gTLD process. The company fully expected its .patagonia application to be evaluated against “transparent and predictable criteria” that were made available to applicants, said Kristina Rosette, who is of counsel at Covington & Burling and focuses on domain name, Internet, and trademark matters. “Yet, [Patagonia’s] experience demonstrates the ease with which one stakeholder can jettison rules previously agreed upon after an extensive and thorough consultation.”
Rosette went on to issue a rebuke to ICANN that hits at the heart of its goals to encourage domain expansion. “If Patagonia had any inkling that the process would unfold as it did, it would never have applied for .patagonia in the first place,” she said. She also told the ICANN board that the time and money spent preparing and defending its domain application would have been put to better use producing quality products and supporting environmental causes.
But perhaps the most important assertion made by brand holders is that ICANN should follow the tenets of international trademark law when making decisions about web domains. And those laws do not support the GAC’s right to object to .amazon, Claudio Digangi, Internet policy manager for the International Trademark Association (INTA), said at the ICANN forum in Durban.
Digangi expanded on the issue for CorpCounsel.com: “International legal principles and laws governing trademarks do not grant governments exclusive rights to geographic terms, and the rights of trademark owners under these principles must be upheld.”
J. Scott Evans, senior legal director of global brand and trademarks for Yahoo! Inc. and a board member of INTA, was even more forceful when he spoke at the forum. “There is no international recognition of country names as protection and they cannot trump trademark rights,” he said. “So giving countries a block on a name violates international law, so you can’t do it.”
For companies and their attorneys, the issue goes well beyond Amazon. Many have stood on the sidelines before applying for a top-level domain, waiting to see how well the process works. “The first 2,000 applications was the beginning,” said Marsh. “My clients who were waiting now wonder where this will lead.”
She noted that it’s unclear what would happen if Scandinavian countries were to object to the use of .viking, for example. And other rivers, such as the Hudson and the Nile, make good marks but would risk rejection as a top-level domain under ICANN’s reasoning, she said. Marsh added that her clients are concerned that ICANN could start rejecting all sorts of gTLDs if a group claims it would be disenfranchised.
“It’s a slippery slope,” she told CorpCounsel.com. “As a trademark attorney, I see the wheels coming off the bus in this whole process,”
Patagonia, unlike Amazon, withdrew its application when it saw the writing on the wall. The company remains convinced it had the right to the domain, company spokeswoman Jess Clayton told CorpCounsel.com. But “the process was too unpredictable and burdensome to warrant the continued effort required to move the application forward,” she said. It also decided to withdraw, she noted, because the company has strong ties to the Patagonia region through its business and environmental efforts, and “did not wish to be adverse to Argentina and Chile”—two of the countries that strongly opposed the domain application and where it does a lot of environmental and sustainability work.
Meanwhile, attorneys say Amazon is lobbying hard—urging the ICANN board to reject the GAC’s recommendation and approve the domain. And INTA said it also has submitted a letter to the ICANN board encouraging it to “exercise its discretion” and to examine the GAC’s advice “within the constructs of international principles and laws.” Amazon spokesman Ty Rogers said the company would not comment.
“As this issue is unprecedented, there is no way to know for sure what the ICANN board will decide,” INTA’s Digangi said. The advice of governments carries weight in the decision-making process, he noted, but “the board is fully within its authority to disregard the advice.”
