1. Pierfrancesco C. Fasano Mediation Case Manager
GEOGRAPHICAL INDICATIONS (GIs) PROTECTION VS INTERNET FREEDOM: ALTERNATIVE DISPUTES RESOLUTION (ADR) AS METHOD AND MEDIATION AS OPTION
Protection of Geographical Indications (GIs) in the new Internet scenario
EU Parliament – Representative Office in Milan – Palazzo delle Stelline
Milan, 28th February 2014
Pierfrancesco C. Fasano
Mediation Case Manager 1 1 1 1

2. Summary ABOUT US GIs – LEGAL FRAMEWORK OFF LINE
ALTERNATIVE DISPUTE RESOLUTION – OUT- OF-COURT DISPUTE RESOLUTION
GIs – LEGAL FRAMEWORK ONLINE
PROPOSED SOLUTIONS 2 2 2 2

3. About us
Dispute Resolution Center specialized in Intellectual Property (IP) matters
Accreditations:
2001 by Registry “.it” as Dispute Resolution Service Provider to resolve domain name disputes under ccTLD “.it”
2012 by Ministry of Justice as Mediation Center in IP disputes
2013 by Ministry of Justice as Mediation Training Center 3 3 3 3

4. Geographical Indications (GIs)
International legal framework – Off line
Paris Convention (1883): false indication
Madrid Agreement (1891): false and deceptive indication
Lisbon Agreement (1958): definition of appellation of origin (AO)
TRIPs Agreement (1994): first international treaty bound to protect GIs and to enforce its application
WTO Agreement: protection and extension 4 4 4 4

5. Geographical Indications (GIs)
International legal framework – Off line
Lisbon Agreement
Total Contracting Parties: 28 countries
Africa: Algeria, Burkina Faso, Congo, Gabon Togo, Tunisia
Asia: Georgia, Islamic Rep. of Iran, Israel, DPR of Korea
America: Costa Rica, Cuba Haiti, Mexico, Nicaragua, Peru
Europe: Bosnia and Hercegovina, Bulgaria, Czech Rep., France, Hungary, Italy, Moldova, montenegro, Portugal, Serbia, Slovakia, The FYR of Macedonia 5 5 5 5

6. Geographical Indications (GIs)
International legal framework – Off line
Lisbon Agreement
905 registrations – 800 in force 6 6 6 6

7. Geographical Indications (GIs) National legal framework – Off line
Collective trademarks: owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association
Certification marks: given for compliance with defined standards and granted to anyone who can certify that the products involved meet certain established standards. The owner (certifier) cannot use it
In many jurisdictions potection of GIs as collective or certification marks 7 7 7 7

8. Patent (process) protection in 1909
Geographical Indications (GIs)
National legal framework – Off line
Example of a product using two or more IPRs
Patent (process) protection in 1909
Trademark protection: combination of words, colours, and images, 3-dimensional, well-known trademark
The figurative (device) element – Cervin/Metterhorn in Zermatt is considered as a figurative GI (under Swiss law and practice) 8 8 8 8

9. AOC in France (AOP French abbreviation for PDO)
Geographical Indications (GIs)
National legal framework – Off line
Example of a geographical name with multiple protection
AOC in France (AOP French abbreviation for PDO)
Collective mark of ewe milk producers in the area of Roquefort
US Certification mark 9 9 9 9

10. Geographical Indications (GIs)
Supranational legal framework – Off line
EU logos/symbols used for products bearing a GI
Protected Designation of Origin (PDO) - L
Protected Geographical Indication (PGI) - C
Traditional Speciality Guaranteed (TSG) - R 10 10 10 10

11. Geographical Indications (GIs) Hot key points – Off line
GIs are independent category of IP = distinctive signs
GIs vs free trade – Internet Freedom
Complex and controversial issue at international – national – supranational level
Commercial and economic stakes
Social, historical and cultural dimensions
Emotional debates
Not sufficient empirical evidence on Pros and Cons
Inadequate court dispute resolution system 11 11 11 11

12. Alternative Dispute Resolution
Alternatives to court-based litigation which is often time and cost consuming
Arbitration (expedited): binding decision on parties
Mediation or Conciliation: assistance of parties to come to an agreement (court-annexed, voluntary, mandatory)
Other methods: e.g. neutral assessment of facts, appraisal, ombudsman or consumer complaints boards' recommendation 12 12 12 12

13. Mediation
A process whereby two or more parties to a dispute attempt by themselves to reach an agreement on the settlement of their dispute with the assistance of a neutral and qualified third party (mediator)
Advantages:
Cost-effective
Quick
Voluntary (sometimes mandatory or court-annexed)
Confidential
Informal
Personalized solution 13 13 13 13

14. EU Mediation Legal framework
Directive 2008/52/CE of certain aspects of mediation in civil and commercial matters: “Mediation can provide a cost-effective and quick extra-judicial resolution in civil and commercial matters through processes tailored to the needs of the parties. Agreements resulting from mediation are more likely to be complied with voluntarily and are more likely to preserve an amicable and sustainable relationship between the parties. These benefits become even more pronounced in situations displaying cross-border elements”.
Agreement enforeable in Member States (except Denmark) 14 14 14 14

15. Domain Name Disputes and Mediation
Examples
co.uk - Nominet
Fast trasparent process to help parties settle domain name disputes where:
Party making the complaint has rights in a name which is similar to the domain name; and
Registrant has taken unfair advantage of those rights
Based on free, confidential mediation
Quick: 2 weeks
If no settlement or registrant does not respond → Expert decision (transfer or deletion) 15 15 15 15

16. Domain Name Disputes and Mediation Examples – co.uk Nominet16 16 16 16

17. Domain Name Disputes and Mediation
Examples
.sg – Singapore Mediation Centre
Singapore Domain Name Dispute Resolution Policy (SDRP) and Rules for SDRP
Quick, convenient and relatively inexpensive mechanism to resolve domain name disputes where:
Domain name is identical or confusingly similar to name, trade mark or service mark in which petitioner has rights recognised under Singapore law,
Registrant not entitled for registration and/or use of domain name, and
Domain name registered and/or used in bad faith
If parties agree Panel (called upon to decide the dispute) may mediate the dispute in 15 working days from the appointment of Panel 17 17 17 17

18. Domain Name Disputes and Mediation
Examples
.it – MFSD
Upon request MFSD offers mediation service in accordance with its Mediation Rules
Voluntary, informal, quick procedure
Italian Mediation Law (D.Lgs. n. 28/2010) provides for fiscal benefits (tax credit) to incentivate the mediation:
500 euros if mediation is successful (agreement)
250 euros if mediation fails (no agreement or default of respondent)
If mediation fails petioner may file a complaint for re- assignation of domain name 18 18 18 18

19. Domain Name Disputes and Mediation
Examples – .it MFSD
Request for mediation
Early evaluation meeting
Appointment of mediator
Initial contacts between mediator and parties
Setting up the first meeting
Agreeing preliminary exchange of documents
First and subsequent meeting(s)
Gathering information and identifying issues
Exploring the interests of parties
Developing options for settlement
Evaluating options
Concluding 19 19 19 19

20. ICANN's New gTLD Program GIs Legal framework Online
State of art – Quo vadis ?
GIs Legal framework Online
1,930 new domain applications – 1,408 unique applications
116 Internationalized Domain Name applications in 12 scripts
Applicants from 60 countries from all regions: Africa (17), Asia Pacific (303), Europe (675), Latin America (24), North America (911)
664 “brand applications”
84 “Community-Based” applications
66 geographical applications
Applications: .food, .cheese, .beer, .pizza, .wine and .vin 20 20 20 20

21. ICANN's New gTLD Program GIs Legal framework Online
State of art – Quo vadis ?
GIs Legal framework Online
1,408 unique strings means c. 1,350 registries
1,350 registries = 56 registries launching every month for 2 yrs
By end of 2015 domain name system will have grown from 275 registries to c. 1,600 registries
Short term:
New gTLDs to run in parallel with .coms (not to replace)
Educations of consumers (farms/consortia) that .brand is a safe environment
Long term:
Second and third rounds like .com boom: thousands of applications at a much lower price
Rebranding from .com to .brand
500,000 new gTLD registries in a decade 21 21 21 21

22. ICANN's New gTLD Program GIs Legal framework Online
State of art – Quo vadis ?
GIs Legal framework Online
Limit of final draft of new gTLD Registry Agreement – Provisions of Specification 5 concerning geographical names which might be used in second level and/or other registrations (4. Country and Territory Name), in their current form, are by no means sufficient to ensure the respect of the legistimate rights deriving from GIs
Proper system of dispute resolution based on the legitimate rights of GIs owners and beneficieries should be established 22 22 22 22

23. New gTLDs Rights Protection Mechanism
Pre-Delegation Objections (including Legal Rights Objection - LRO)
Trademark Clearinghouse
Sunrise
Trademark Claims
Uniform Rapid Suspension System (URS)
TM Post-Delegation Dispute Resolution (PDDRP)
Registry Restriction Dispute Resolution (RRDRP)
UDRP: remains applicable to all new gTLDs 23 23 23 23

24. New gTLDs and Mediation
ICANN New gTLD Program – Applicant Guidebook incentivate mediation – not working
Pre-Delegation Objection Procedures: Attachment to Module 3 – New gTLD Dispute Resolution Procedure Article 16 (Negotiation and Mediation)
Registry Restrictions Dispute Resolution Procedure: Article 21 (Availability of Court or other Administrative Proceedings) 24 24 24 24

25. New gTLDs and Mediation Pre-Delegation Objection Procedures
Article 16 (Negotiation and Mediation):
Parties are encouraged but not required to participate negotiations and/or mediation at any time throughout the dispute resolution process aimed at settling their dispute amicably
Each DRSP shall be able to propose, if requested by the parties, a person who could assist the parties as mediator
A person who acts as mediator for the parties shall not serve as an Expert in a dispute or proceeding between the parties involving the same gTLD 25 25 25 25

26. New gTLDs and Mediation Pre-Delegation Objection Procedures
Article 16 (Negotiation and Mediation):
Conduct of negotiations or mediation shall not, ipso facto, be the basis for a suspension of the dispute resolution proceedings or the extension of any deadline. Upon joint request of the parties DRSP may grant an extension of deadline or the suspension of the proceedings
If parties agree on a settlement of the matter, the parties shall inform the DRSP, which shall terminate the proceedings and inform ICANN and the parties accordingly 26 26 26 26

27. New gTLDs and Mediation
Registry Restriction Dispute Resolution Procedures (RRDRP)
Article 21.2 (Availability of Court and other Administrative Proceedings):
Parties are encouraged but not required to participate in informal negotiations and/or mediation at any time throughout the dispute resolution process but the conduct of any such settlement negotiation is not, standing alone, a reason to suspend any deadline under the proceedings 27 27 27 27

28. List of reserved domain names GIs (adoption List of Lisbon Agreement)
Proposed solutions
ICANN → Registries
List of reserved domain names GIs (adoption List of Lisbon Agreement)
TMCH including GIs
Enhance mediation
Binding early legal opinion provided by ADR Providers 28 28 28 28

29. “.it” Domain Name Dispute Resolution Service Provider
MFSD S.r.l.
E: - Certified (only within Italy):
Registered office:
Viale Beatrice D'Este, 20 – Milan
T: /05 – F:
Administration: Giustina Cervone
IP Mediation Center
Case Manager: Pierfrancesco C. Fasano
Secretariat: Monica Milano
Via dei Castani, 80 – Rome
T: – F:
“.it” Domain Name Dispute Resolution Service Provider
Via Donizetti, 1/a – Milan
T: – F:
Case Manager: Stefano Monguzzi 29 29 29 29