Unsuccessful harvest for the Champagne domain by David Taylor and Jane Seager, Hogan Lovells

Hogan Lovells logoJane Seager imageThe Comité Interprofessionnel du Vin de Champagne (CIVC, the representative body of French Champagne producers), a body established by statute under the laws of France, recently lost a Complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organization (WIPO). The Complaint concerned the domain name <champagne.co> (the Domain Name), and was denied on the grounds that the CIVC (the Complainant) failed to prove that the Domain Name was identical or confusingly similar to a trade mark or service mark in which it had rights as per Paragraph 4(a)(i) of the UDRP.

As reported in the February 2010 issue of Anchovy News, the UDRP was adopted by .CO Internet S.A.S. (the entity responsible for the .CO extension opened for general registration on 20 July 2010) for the settlement of disputes relating to .CO domain names. Whilst .CO is in fact the country code Top Level Domain (ccTLD) for Colombia, it has been widely marketed as a new “generic” extension that may be used as an alternative to .COM and could potentially stand for company, corporation, commerce, communities, content etc. As a result of this registrations under .CO have proved popular.
David Taylor image
The Respondent in the case at hand was a Steven Vickers, based in the UK, who operated an IT consultancy and computer sales business in London, and did not trade in champagne or beverages of any kind. The Respondent registered the Domain Name on 21 July 2010. The Complainant, whose statutory purpose includes defending, preserving and promoting the interests of all those involved in the production and marketing of the wines sold under the appellation of origin “Champagne”, filed a Complaint with WIPO on 12 April 2011 seeking transfer of the Domain Name.

To be successful under the UDRP, a complainant has the burden of proving that:

  • The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

The term “rights” under Paragraph 4(a)(i) of the UDRP refers to a trade mark or service mark which can either be registered or unregistered. As it did not provide any evidence of a registered trade mark in the term CHAMPAGNE, the Complainant tried to establish rights for the purpose of paragraph 4(a)(i) of the UDRP by other means, but ultimately failed to do so.

Firstly, the Complainant sought to establish its rights to meet the first requirement of the UDRP by relying on its rights in the term CHAMPAGNE as an appellation of origin under French law and a geographical identifier under European Union law. The Panel highlighted that it was well established that such rights should remain outside the scope of the UDRP, in line with comments made in Paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The only exception to this principle is where a complainant shows “that it has rights in the term and that the term is being used as a trade mark for goods or services other than those that are described by or related to the geographical meaning of the term (secondary meaning)”.

As the Panel explained, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings in order to constitute a trade mark. Therefore, a geographical indication such as “Champagne” did not constitute a trade mark in the Panel’s opinion since it did not distinguish the wine of one champagne producer from the wine of another. The Panel highlighted the purpose of a geographical identification which is to protect specific producers of a geographical region from loss caused by traders wrongfully applying the identifier to goods which have not been produced in the particular region, taking profit from the goodwill arising out of the reputation which the producers of the protected products have built up.

Secondly, the Panel rejected the Complainant’s argument that it had unregistered rights in a mark as a result of succeeding in passing off actions before courts in the UK. Referring to the Nominet Appeal Decision in relation to the domain name <champagne.co.uk> the Panel highlighted that “(…) care needs to be taken not to equate this right under the law of passing off to what is sometimes referred to as “unregistered trade mark” rights in a brand name.” (DRS 4479, Comité Interprofessionnel du Vin de Champagne v Steven Terence Jackson, 17 August 2007). In this Nominet case the Complainant was successful as it established that it had rights in the term CHAMPAGNE protected under English law. However there was no finding in this decision that the Complainant had unregistered trade mark rights, as required by the UDRP.

To support his finding, the Panel also referred to Dr David Lindsay’s text book on International Domain Name Law:

“A common law trademark in an English-oriented legal system is an unregistered mark the unauthorized use of which will give rise to an action for passing off.

It is not every action in passing off that will amount to common law trademark rights, but only the sub-set of the action for passing off that involves misrepresentations arising from the unauthorized use of a mark.”

Thus, the Panel rejected this argument as well and found that it could not serve to satisfy the first requirement of the UDRP.

In addition, the Panel stated that the fact that the Complainant had succeeded in having “champagne-related” domain names transferred to it under other administrative proceedings in relation to the domain names <champagne.co.uk>, <champagne.ie>, champagnes.fr> and <champagnes.be> was irrelevant. Indeed, alternative dispute resolution procedures applicable to domain names registered under .FR, .BE, .CO.UK and .IE are different from the UDRP and grant protection to a wider variety of names.

Then, although the Panel had no obligation to make any finding on the issue of whether the Domain Name had been registered and used in bad faith, it nevertheless decided to detail this particular point. The Panel found that the sole fact of having the intention to rent, sell or otherwise transfer the Domain Name to a third party, as opposed to the Complainant or to a competitor of the Complainant, did not amount to bad faith registration and use for the purpose of the UDRP.

Finally, the Panel rejected the Respondent’s claim that this case was one of reverse domain name hijacking. As the Panel stated, under the UDRP, “reverse domain name hijacking” is defined as “using the policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. The Respondent had contended that since the Complainant was a complex and legally represented organisation, it could not possibly have thought that it had sufficient grounds for winning this case. To the Respondent, the deficiencies in the Complaint made it obvious that the Complainant knew that the Complaint would be denied.

However, in previous WIPO cases, nominated Panels had noted that “mere lack of success of the complaint is not in itself sufficient to constitute reverse domain name hijacking”. In fact the Respondent would have had to prove that “a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith”, and that “a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”.

In the present case, the Panel was of the opinion that since the Complainant had been involved in many such disputes concerning its intellectual property rights in the name “champagne”, it must clearly have appreciated whether or not it detained a trade mark or service mark in such expression, but even so there were defects in the Complainant’s case. The Panel then underlined the difficulties of having to decide whether such defects were as a result of bad faith, or whether they were simply due to a wrongful appreciation of the issues and of the relevant evidence. The Panel chose to swing the balance in favour of the latter, after listing a series of reasons as to why the Complainant could not have acted in bad faith. The most relevant reason for the Complainant’s lack of bad faith was linked to the fact that if the Complainant had managed to establish that it did have a trade mark or service mark, it would have been very difficult for the Respondent to prove that it registered the Domain Name for another purpose other than to sell it to the Complainant, and in such a scenario the Complainant’s chances of success would have then been real.

This decision illustrates how the concept of “rights” under Paragraph 4(a)(i) of the UDRP is not a loose concept and will be subject to close examination by panels. Many alternative dispute resolution procedures applicable to ccTLDs grant protection to a wide variety of names such as personal names, company names or geographical identifiers. However, the UDRP does not and is limited to trade or service marks for which there is greater harmonisation than for other types of rights. Trying to make other types of protected names fit into the UDRP is like trying to fit a square peg in a round hole and will likely result in rejection of a potential complaint.

The decision is available at: www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2011-0026

This Anchovy News article by by David Taylor and Jane Seager from law firm Hogan Lovells was reproduced with permission.