Why Latin American Countries Scored a Major Victory Over Internet Domain Names

The two South American nations filed complaints against Patagonia Inc.

July 24, 2013— -- Chile and Argentina have scored a major victory in the battle over the use of geographic terms such as generic top level domain names (gTLD), a new form of internet addresses that include endings such as .xxx, .app, .book, .search, and .amazon.

The two South American nations filed complaints against Patagonia Inc., a California-based clothing company, when it put in an application request for the dot-brand name .patagonia. The company withdrew the request this week. "This is excellent news for our country," Jorge Atton, Chile's Telecommunications undersecretary, told EFE. "It ratifies our institutions' role in defending Patagonia's geographic identity, and, above all, it confirms our independence and sovereignty in Internet matters."

Patagonia Inc. had applied for the .patagonia gTLD early last year, following ICANN's decision in 2011 to end all restrictions on these domains, expanding the number available from the original 22, which included .com, .asia, .gov, .edu, .mil, .org, and .net, to a virtually endless figure, which can include words such as .gratis, .mormon and .transformers.

ICANN opened up an application for the new domain names in January 2012. Until May of that year, companies like Patagonia and Amazon filed paperwork and paid $185,000 to apply for a specific web address ending.

By June, ICANN revealed that it had received 1,930 applications. The organization released the names of the companies that had applied, and opened up a two-month public discussion for governments and other companies to comment or raise objections.

During those two months, countries like Switzerland filed complaints against the application for Swiss International Airlines' application for the gTLD .swiss, and Brazil and Peru spoke out against the use of the domain name .amazon, a gTLD pursued by the Internet retail giant Amazon.com. That's also around the time when Argentina and Chile protested the use of .patagonia.

All of these countries argued that granting these domain names to private companies would prevent people living in those geographic locations from developing websites that could benefit or bring attention to them.

Since then, these countries have lobbied against these domain names during periodic ICANN meetings, garnering support from other governments who prefer to avoid the possibility of watching how the names of their geographic and cultural patrimonies become an ending to a web address.

The protesting countries soon gained the support of the Governmental Advisory Committee, a group made up of representatives of more than 100 nations that advise ICANN on public policy issues and international law. The committee backed countries like Argentina and Chile in their objections against the use of geographic terms, and it also recently announced a formal objection to the .amazon gTLD.

In part, that is what might have caused Patagonia Inc. to withdraw its application, according to Jacqueline D. Lipton, a University of Houston Law Center professor and the author of Internet Domain Names, Trademarks and Free Speech.

There was no legal battle involved in the process, however, so it's unlikely that Argentina and Chile's victory will set a precedent for the other cases. What could set a precedent is what happens between Brazil, Peru and Amazon.com.

"I think what Amazon does is going to be pretty important because it's such an obvious big ticket trademark," Lipton says. "There may be companies that look at Patagonia's $185,000 fee to apply and decide not to it. But Amazon's case will probably play out before anyone has to apply again, and that will influence other big companies' decisions."

Amazon.com could either choose to withdraw the application, like Patagonia Inc. did. Or, it could embark on a legal action if ICANN denies their application.

"There are two ways to look at this issue," Lipton says. "On the one hand, you can see it as the problem of how to balance the rights of trademark holders against cultural geographical terms in the domain space. On the other hand, given that the Internet is a commercial realm, if you don't allow trademarks to register their names, then you could say that it's a waste of resources. It's not like anyone wants the domain name. They just don't want Amazon to have it."