The Comité Interprofessionnel du Vin de Champagne (CIVC) is the representative body of French champagne producers. Its statutory purpose is to defend, preserve and promote the interests of all those involved in the production and marketing of wines sold under the appellation of origin 'Champagne'.
Recently, the CIVC lost a complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organisation (WIPO). The complaint involved the domain name 'champagne.co', and was denied on the grounds that the CIVC failed to prove that the domain name was identical or confusingly similar to a trademark or service mark in which it had rights as per Paragraph 4(a)(i) of the UDRP.
The UDRP was adopted by .CO Internet SAS (the entity responsible for the '.co' extension opened for general registration on July 20 2010) for the settlement of disputes relating to '.co' domain names. While '.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'. As a result, registrations under '.co' have proved popular.
The respondent, Steven Vickers, was a UK resident who operated an IT consultancy and computer sales business in London. He did not trade in champagne or other beverages. Vickers registered the domain name on July 21 2010. On April 12 2011 the CIVC filed a complaint with WIPO, seeking transfer of the domain name.
To succeed under the UDRP, a complainant must prove that:
- the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which it has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and used in bad faith.
The term 'rights' under Paragraph 4(a)(i) of the UDRP refers to a trademark or service mark which can be either registered or unregistered. As the CIVC did not provide evidence of a registered trademark in 'champagne', it tried to establish rights through the use of other means, but ultimately failed to do so.
First, the CIVC sought 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 EU law. However, the panel stated that it is well established that such rights should remain outside the scope of the UDRP, in line with Paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.(1) The only exception 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)".
The panel explained that in order to constitute a trademark, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings. Therefore, a geographical indication such as 'Champagne' did not constitute a trademark, since it did not distinguish the wine of one champagne producer from that of another. The panel also emphasised that the purpose of a geographical identification is to protect the producers of a geographical region from loss caused by traders wrongfully applying the geographical identifier to goods not produced in the particular region, and thus profiting from the goodwill arising out of the reputation which the producers of the protected products have established.
Second, the panel rejected the CIVC's argument that it had unregistered rights in the mark as a result of succeeding in passing-off actions before courts in the United Kingdom. Referring to the Nominet appeal decision in relation to the domain name 'champagne.co.uk', the panel stated 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 trademark' rights in a brand name".(2) In that case, the CIVC successfully established that it had rights in the term 'champagne' which were protected under English law. However, there was no finding in this latest decision that the CIVC had unregistered trademark rights, as required by the UDRP.
To support this point, the panel also referred to Dr David Lindsay's International Domain Name Law book:
"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 also rejected this second argument and found that the CIVC had failed to meet the UDRP's first requirement.
In addition, the panel stated that it was irrelevant that the CIVC had previously succeeded in having 'champagne-related' domain names, such as 'champagne.co.uk', 'champagne.ie', 'champagnes.fr' and 'champagnes.be', transferred to it under other administrative proceedings. This is because alternative dispute resolution procedures applicable to domain names registered under '.fr', '.be', '.co.uk' and '.ie' can differ from the UDRP and grant protection to a wider variety of names.
Although the panel was not obliged to examine whether the domain name had been registered and used in bad faith, it nevertheless did so. It 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 CIVC or to a competitor of the CIVC, did not amount to bad-faith registration and use for the purpose of the UDRP.
The panel also rejected the CIVC's claim that this was a case of reverse domain name hijacking. The panel stated that 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". Vickers contended that since the CIVC was a complex and legally represented organisation, it could not possibly have thought that it had sufficient grounds for winning the case. To Vickers, it was obvious that the CIVC knew 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, Vickers would need to prove that his "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".
The panel held that since the CIVC had been involved in many such disputes concerning its IP rights in the name 'champagne', it must have known that it did not hold a trademark or service mark in the domain name. Even so, there were defects in its case. The panel underlined the difficulty in deciding whether such defects were due to bad faith or oversight of the issues and relevant evidence. The panel finally ruled in favour of the latter, the main reason being that had the CIVC managed to establish its rights, it would have been difficult for Vickers to prove that he had registered the domain name for another purpose other than to sell it for profit to the CIVC.
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 (eg, personal names, company names and geographical identifiers). However, this is not the case with the UDRP, which is limited to trademarks or service marks for which there is greater harmonisation than for other types of rights. Trying to fit other types of protected names into the UDRP is near impossible and will likely result in the rejection of a potential complaint.
The decision for this case can be accessed at the WIPO's website.(3)
For further information on this topic please contact Vincent Denoyelle at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email ([email protected]).
Endnotes
(1) Second edition, "WIPO Overview 2.0".
(2) DRS 4479, Comité Interprofessionnel du Vin de Champagne v Steven Terence Jackson, August 17 2007.
(3) http://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2011-0026