In WIPO Case No DCO2011-0026 Comité Interprofessionnel du vin de Champagne (CIVC) v Steven Vickers, it was held that although CIVIC had rights in “champagne” as a geographical indication, it failed to show that its rights constituted an unregistered trade mark for the purposes of the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP).
CIVC, which represents Champagne producers, brought a complaint under the UDRP against the Defendant, Steven Vickers. Mr Vickers registered over 100 .co domain names in 2010, including champagne.co, which CIVC sought to have transferred.
CIVC claimed that the domain name was identical or confusingly similar to a trade or service mark in which it had rights, namely “champagne”, which, although unregistered, had a worldwide reputation. Moreover, the rights of Champagne producers were protectable in the United Kingdom under the common law of passing off.
Sole panellist Warwick Smith accepted that the Complainant had rights in the expression “champagne” as an appellation of origin under French law. However, paragraph 4(a)(i) of the UDRP requires the complainant to show that it holds rights in a trade or service mark and the consensus view of World Intellectual Property Organisation panels is that the UDRP does not extend protection to geographical terms unless the complainant can show that “it has rights in a 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”.
Mr Smith was not satisfied that CIVC had shown that its rights in the expression “champagne” constituted an unregistered trade mark for the purposes of paragraph 4(a)(i) of the UDRP. He said it was generally accepted that, to be a trade mark, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings. In Mr Smith’s view, geographical indications spoke fundamentally of the quality and reputation of the goods produced according to certain standards in a specific geographical area, but not of any particular or individual trade source.
Moreover, it was apparent to Mr Smith that the framers of the UDRP never intended protection to extend to geographical indications or protected designations of origin and the fact that the English courts recognise a trader’s right to sue for damage to goodwill from passing off does not necessarily imply that the trader holds an unregistered trade or service mark. Thus, CIVC’s claim that it possessed unregistered trade mark rights in the expression “champagne” had not been made out and the complaint was denied.
This decision is not reflective of all domain name dispute resolution policies. The Nominet appeal panel in CIVC v Jackson, following the applicable Nominet policy, permitted CIVIC to rely on rights in a champagne “name” as well as a trade mark in its successful complaint against champagne.co.uk. Interestingly, Mr Smith noted that some policies appear to have gone even further. The .ie policy, for example, permits a complainant to rely on a geographical indication per se. Additionally, the French and Belgian policies applicable in the .fr and .be decisions do not appear to have restricted protection to owners of trade or service marks.