"The health sector is a major target of
those engaged in abusive online cases, e.g.
online pharmacies selling counterfeit
drugs, and 10% of complaints are filed by
the Pharma industry," said the World
Health Organisation (WHO) in its 2009
report of the 49th Consultation on
International Non-proprietary Names for
Pharmaceutical substances (INN
Consultation). In this report, the WHO
highlighted the vulnerability of the INN
system to online abuses, due in part to its
uneasy interplay with trade mark rights.
Amid significant changes to the Internet
system, we consider the relevance of this
issue today, what action has been
suggested, and the additional challenges on
the horizon.
INNs registered as domain names grant
their owners a valuable quasi-property
right that is contrary to the founding
principles of the INN system and raises
concerns about consumer safety. In
addition, such use can lead to brand
dilution or tarnishment, particularly where
INNs remain on patent, or where a sole
manufacturer is authorised to distribute a
drug within a region.
The legal framework
WHO member states agree not to
register trade marks or trade names that
consist of INNs. However, no equivalent
prohibition applies to domain names. In
addition, the procedure by which abusive
domain names can be challenged or
blocked (the UDRP) is not effective
against domain names consisting of INNs
in the vast majority of cases.
The UDRP complaints procedure,
governed by ICANN or one of its
approved third party providers, is generally
reliant upon three conditions: (i) the
existence of an earlier trade mark right
which is confusingly similar or identical to
the domain name; (ii) a lack of legitimate
rights or interests in the domain name by
the registrant; and (iii) the bad faith
registration or use of the domain.
Previous UDRP complaints have sought to
rely on a domain's confusing similarity to
an INN instead of a trade mark. However,
as explained in Teva Pharmaceutical
Industries Limited v BLTC Research, the
non-proprietary nature of INNs means
they fall outside the meaning of a trade
mark for the purposes of UDRP policy.
This means pharmaceutical companies are
unable to use the UDRP system to take
action against a domain name which is
identical to an INN, even if possessing a
monopoly right over production of the
INN, through patent rights, for example.
Solutions explored
After substantial consultation, WIPO's
Second Internet Domain Name Process
proposed in 2001 that ICANN should
firstly prohibit the registration of new
domain names identical to registered
INNs, and secondly provide a simple
administrative verification procedure
through which third parties could seek
cancellation of domains consisting of
INNs. However the WIPO General
Assembly did not support this
recommendation. The WHO, taking on
the mandate in its 49th INN Consultation
"to promote and protect INNs" and "to
prevent registration of INNs as domain
names" wrote to ICANN in December
2009 and again in April 2010 urging it to
take (unspecified) appropriate measures to
protect INNs before moving forward with
the planned expansion of the list of
Generic Top Level Domains (gTLDs).
The current position
Five years on, we approach the 59th INN
Consultation with no reported response
from ICANN. The expansion of gTLDs
continues apace, and there remains no
uniform mechanism by which abuses of
the INN system through domain names
can be efficiently prevented or resolved.
Meanwhile the increasing use of INNs in
drug prescriptions and on generic
pharmaceuticals has exposed consumers
to INNs without necessarily educating
them about their non-proprietary nature.
Ever greater numbers of consumers are
also spending more online, with online
sales topping USD $1 Trillion in 2012, and
increasing each year since. This
opportunity has sparked exponential
growth of online pharmacies around the
world. While regulatory procedures are
designed to protect consumers, these have
failed to keep up with the ever-
sophisticated threats posed by
unscrupulous online pharmacies. The lack
of an adequate mechanism to block use of
INNs as domain names therefore presents
a choice opportunity for illicit actors. As
consumers' familiarity with INNs
increases, so too does the extent to which
they are likely to perceive domain names
consisting of INNs to signify authenticity.
As ICANN continues to increase the
number of available gTLDs, NetNames
predicts a step-change in the way users
access websites, which may compound this
problem. In particular, as parts of web
addresses take on more consumer-facing
meanings e.g., .london for local results,
.tech for gadgets etc., direct search is
predicted to become more popular. Some
pharmaceutical companies have adopted
the strategy of pre-emptively registering
domains in order to block would-be illicit
actors from reflecting INNs in domain
names. However, this approach is far from
perfect, requiring constant monitoring,
significant financial outlay and offering no
guarantee that all targeted behavior can be
blocked. The increasing number of gTLDs
under which INNs can now be registered
will render this strategy even less
effective.
One strategy mooted by WHO to
overcome these issues is the promotion of
a new regulated gTLD, such as .health as
the go-to registry for verified and
impartial consumer health information.
However, in a characteristic display of
internet irony, the right to .health was bid
upon exclusively by four private, for-profit
companies, sparking third party objections
from the French government, International
Medical Informatics Association and the
European Commission Communiqué. Two
private applicants have managed to
overrule these objections and will now
proceed to bid for the gTLD by auction.
In overturning one decision, panellist Jan
Paulsson acknowledged concerns that the
USD $185,000 minimum investment in the
gTLD might lead to commercial interests
prevailing over consumer protection, but
dismissed them as "undisguised bias against
commercial applicants" which did not
permit him to object to the bids under
ICANN's policies.
Against this backdrop, it is clear that
ICANN sees its role as confined to
protecting commercial interests. Perhaps
then it is time to revisit measures to
safeguard the correct operation of the
INN system - and the health of consumers
online.
INNs - Internet Name Nonchalance?
Sarah Wright and Stuart Brooks, Olswang
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