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Rights in a Name Do Not Qualify as an Unregistered Trademark

The Panel in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011) posed the following question: “Are Rights in a Protected Designation of Origin or a Geographical Identifier Sufficient as such for the Complainant to make out a Case of ‘Rights’ under Paragraph 4(a)(i) of the Policy?” The Complainant submitted evidence that it has rights in the name “Champagne.” Indeed, Panels in other administrative proceedings have agreed, but those decisions were reached under Policies other than UDRP. The Panel in Comité Interprofessionnel du vin de Champagne explained that none of those proceedings “in which the Complainant succeeded in having champagne-related domain names transferred to it [] assist in this case” for the following reasons:

The Nominet Policy applicable in the CIVC v. Jackson case permits a complainant to rely on rights in a “name” (as well as in a trademark), and it was on the basis of rights in a “champagne” name that the Complainant succeeded. The .ie Policy [in CIVC v Richard Doyle, Case No. DIE 2007-0005] appears to be even broader in scope, permitting a complainant to rely on (among other things) a geographical identification. And the French and Belgian domain name dispute resolution policies which were applicable in the .fr and .be decisions to which the Complainant referred, do not appear to have restricted the standing requirement to ownership of a trademark or service mark, as the UDRP does.

The prerequisite “right”for standing to maintain a UDRP proceeding is a trademark or service mark and not a geographical identifier or a designation of origin which supported the affirmative decisions in the four other administrative proceedings.

The legislative underpinning of the UDRP, the Final Report made it clear that “registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure.” The issue was revisited in the Final Report on the Second Domain Name Process. The authors noted in this later report that the subject was a “difficult area” to consider and that the views were “ardently held.” Although there are existing international norms that prohibit false and deceptive indications of geographical source on goods “those norms [quoting from Comité Interprofessionnel du vin de Champagne] were confined to the use of terms on goods, and that there was no uniformly agreed international list of geographical indications.” The Policy has not been revised and “geographical indications, as such, remain outside the scope of the Policy.”

Municipal complainants with rights based on geographical identifiers were among the early losers in the UDRP process. To take one of a number of prominent examples, a complainant who returned for a second bite received the ultimate penalty, a finding of reverse domain name hijacking [Kur-und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 13, 2004) and Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2000-0617 (WIPO August 17, 2000)]. It was more successful when it filed an action in civil court claiming infringement not only of trademark rights, but also of personality rights (rights in the name St. Moritz). The court held that because St. Moritz could rely on rights in the name “St. Moritz”, the content of the website accessible under the domain name was irrelevant. In a judgment dated 4 May 2009, it ordered the transfer of the domain name to the tourism authority of St. Moritz.

Comité Interprofessionnel du vin de Champagne combines both geographical identifier and designation of origin (both upper case and in lower case the generic content of the bottle). However, the difficulty for authorities and associations is that they are not themselves the producers of the goods. A geographical indication “does not [per se] distinguish the wine of one champagne producer from the wine of another, and so does not fulfill the fundamental function of a trademark of distinguishing the goods or services of one undertaking from those of other undertakings.” There is an indication in the decision that the Complainant would have been in a better position had it been the holder of a certification mark. “It seems to this Panel that geographical indications speak fundamentally of the quality and reputation of the goods produced according to certain standards in a specific geographic area, but not of any particular or individual trade source as such.”

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