WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comité Interprofessionnel du vin de Champagne v. Steven Vickers
Case No. DCO2011-0026
1. The Parties
The Complainant is Comité Interprofessionnel du vin de Champagne of Épernay, France, represented by Lee Bolton Monier-Williams, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Steven Vickers of London, United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <champagne.co> (“the Domain Name”) is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 13, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On April 13, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Complainant filed an amended Complaint on April 13, 2011. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2011. The Response was filed with the Center on May 6, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on May 11, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
By Procedural Order No. 1 the Panel requested a further statement from the Complainant answering three questions relating to the Complainant’s assertion that it holds trademark rights in a “Champagne” mark. A copy of Procedural Order No. 1 is annexed to this decision.
By email dated May 24, 2011, the Complainant’s representative sought an extension of time until June 10, 2011 to respond to the Panel’s questions in Procedural Order No. 1. By further direction dated May 26, 2011, the Panel granted an extension of time until May 31, 2011, and advised that any request for a further extension beyond that date would need to be supported by compelling reasons. The Panel also noted that in the event of any such request being made he would wish to hear the Respondent’s views on the further time extension request.
By email dated May 26, 2011 the Complainant did request a further extension. That request was opposed by the Respondent. By further procedural direction made on May 29, 2011, the Panel allowed the Complainant one further day to (June 1, 2011) to submit its answer to the Panel’s questions. The Panel’s reasons for limiting the further time extension to one day are set out in Section 6A(i) of this decision. The time for the Panel to give its decision in the case was further extended to June 7, 2011.
In the event, the Complainant elected not to provide any further statement. By email to the Center dated June 1, 2011, it requested that the Complaint “be withdrawn at this stage”. It submitted that (given that request) it was unnecessary to continue with the proceeding. It asked the Panel to terminate the proceeding.
By email dated June 1, 2011, the Respondent’s representative opposed the Complainant’s request that the proceeding be terminated.
By further procedural order made on June 6, 2011, the Panel declined to terminate the proceeding. Reasons for that decision are set out in section 6 A (ii) of this decision.
Having regard to the unusually complex nature of some of the issues in this case, the date for the Panel to give its decision is hereby further extended to June 21, 2011.
4. Factual Background
The Complainant
The Complainant is a body established by statute under the laws of France. Among the Complainant’s statutory purposes is the purpose of 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”. All producers of champagne in the Champagne district of France are required by law to subscribe to the Complainant. The Complainant’s powers include the power to sue and be sued, and the Complainant represents all such producers in this Complaint.
Sales of wine under the name “Champagne” in Europe and elsewhere have been very substantial for over two centuries, both in volume and value. The Complainant says that a valuable worldwide reputation and goodwill in the name “Champagne” has been built up over that period, and that goodwill is said to be part of the trading assets the champagne producers represented by the Complainant. The Complainant says that it has spent large sums of money to promote and enhance the name “Champagne”, over and above the separate brand advertising undertaken by the individual producers represented by the Complainant.
According to the Complainant, the expression “champagne” has not become the common name of a wine in the European Union – it is distinctive only of wine produced in the Champagne region of France. The use of the word “champagne” is regulated throughout the European Union, in particular as a “designation of origin” under Regulation (EC) No. 491/2009.
The Complainant referred to, but did not produce, Court decisions of the Paris District Court in a 2001 case brought by the Complainant against parties known as Rockynet Com Inc. and Saber Enterprises Inc., and the United Kingdom Court of Appeal in Taittinger & Ors v Allbev Limited. In those cases, the name “champagne” was said to have been protected respectively as a registered appellation of origin, and under the United Kingdom law of passing off (“the latter decision on the basis that any product, not being champagne, which was allowed to describe itself as such, would inevitably … erode the singularity and exclusiveness of the description Champagne and so cause … damage of an insidious but serious kind”). The Complainant was a co-plaintiff with Taittinger in the United Kingdom Court of Appeal case.
The Complainant also produced copies of decisions of panels appointed by the Center, the .be Dispute Resolution Center, and the Nominet dispute resolution system operated for the .UK domain name space, in which “champagne-related” disputed domain names were transferred to the Complainant.
The Complainant holds 27 gTLDs and ccTLDs consisting of the word “champagne”, and a further 101 domain names which include “champagne” as part of the name. These domain names include <champagne.eu>, <champagne.biz>, <champagne.com>, <champagne.fr>, and <champagne.co.uk>. The domain names <champagne.co.uk> and <champagne.com> both revert to the Complainant’s websites.
Having regard to the foregoing matters, the Complainant says that it holds unregistered trademark rights in a “CHAMPAGNE” mark.
The Complainant says that it has repeatedly sought to prevent abuse of the name “Champagne” by third party use of domain names, most of which situations are resolved without the necessity for formal action; and through applications before the appropriate registration authorities in many countries.
The Complainant has not authorized or licensed the Respondent to use the name “champagne”.
The Respondent and the Domain Name
The Domain Name was registered on July 21, 2010. It does not resolve to any active website.
The Respondent operates an IT consultancy and computer sales business in London. He does not trade in champagne or beverages of any kind.
In his Response, the Respondent states that he became aware of the proposed .co launch in July 2010, and decided to register a batch of generic “.co” domain names with a view to future sale. He applied for over 100 such domain names, and all were registered in July/August 2010. A sub-group of these domain names consisted of 13 names which related generally to food or drink. One of them was the Domain Name; two others were <brandy.co> and <gin.co>.
In response to a letter from the Complainant’s representative dated February 3, 2011, in which the Complainant offered to purchase the Domain Name for a sum equal to the Respondent’s out-of-pocket expenses incurred in registering the Domain Name, the Respondent’s representative advised that the Respondent “registered the domain name because he thought that it was an attractive generic domain name to own”, and that he intended at some point to sell [the Domain Name] as a generic domain name to somebody who might be interested in using it” (Respondent’s solicitors’ letter dated February 17, 2011).
The Respondent produced a number of extracts from online dictionaries in which the word “champagne” is defined. Generally, they included one entry with the “C” in “champagne” written in upper case – a reference to the Champagne region in France – and another with the “c” in lower case, the latter referring to the sparkling wine. The Respondent also produced the results of a Google search run on the expression “champagne”, showing 19 million results on United Kingdom websites.
The Respondent says that when he registered the Domain Name he had no knowledge of the Complainant or of any particular legal status attaching to the term “champagne” – he simply regarded “champagne” as a kind of sparkling wine.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Champagne has a worldwide reputation and is an unregistered trademark, ownership of which has been acquired through many years’ use of the name by the producers of such wine who are represented by the Complainant. The rights of the producers represented by the Complainant in the mark are protectable in the United Kingdom under the common law of passing off, and have been so protected in a number of decided cases. In Taittinger and Others v Allbev Limited and Another [1993] FSR 641, a case in which the Complainant was one of the plaintiffs, the Master of the Rolls, Lord Bingham, said:
“Any product which is not champagne but is allowed to describe itself as such must inevitably … erode the singularity and exclusiveness of the description Champagne and so cause … damage of an insidious but serious kind.”
2. Champagne has not become the common name of a wine in the European Union – it is distinctive only of wine produced in the Champagne region of France. The use of the word “Champagne” is regulated throughout the European Union by Community Law, in particular, CHAMPAGNE is protected as a “designation of origin” under Regulation (EC) No. 491/2009.
3. Sales of sparkling wine from the Champagne region of France under the name “Champagne” are and have been very substantial for over two centuries, both in volume and value. Accordingly, a valuable and reputation and goodwill has been built up and now vests in the name Champagne. Such goodwill is part of the trading assets of those represented by the Complainant.
4. The Complainant, acting through various promotional bodies set up in the United Kingdom, has expended large sums to promote and enhance the name Champagne, in addition to the separate respective brand advertising by the producers represented by the Complainant.
5. The decisions of the administrative panels or experts under which the domain names <champagne.ie>, <champagnes.fr>, <champagnes.be>, and <champagne.co.uk> were transferred to the Complainant, confirm the extent of the Complainant’s promotion and advertising of Champagne sparkling wine, and the existence of the valuable goodwill and reputation in the name CHAMPAGNE (found as a fact in those administrative proceedings).
6. The reputation and rights associated with the name Champagne have been recognized in numerous cases throughout the world. For example, on September 7, 2001, in a case brought by the Complainant against the companies Rockynet Com Inc and Saber Enterprises Inc, the Paris District Court ruled that “the domain name and the web address “www.champagne.com” and the name “champ.pagne”, represented an illegal use of the Champagne registered appellation of origin, and were evidently of such a nature as to harm and weaken the reputation of this name.”
7. Article 118m of Council Regulation EC 491/2009 provides that:
“2. Protected designations of origins and protected geographical indications and the wines using those protected names in conformity with the product specification shall be protected against:
(a) any direct or indirect commercial use of a protected name:…
(ii) in so far as such user exploits the reputation of a designation of origin or a geographical indication;…
3. Protected designations of origin or protected geographical indications shall not become generic in the Community within the meaning of Article 118k(l).”
Under this Article, the Complainant is entitled to protection against any direct or indirect commercial use by the Respondent of the name “Champagne”.
8. Having regard to the foregoing, the Complainant is the legitimate owner of the rights in the name CHAMPAGNE, and this name is identical to the Domain Name. The only difference is the addition of the suffix “.co”, which it is customary in such disputes to disregard.
9. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following contentions:
(i) The Respondent does not trade in champagne or beverages of any kind. Nor is the Respondent a shareholder, director, or employee of the Complainant, or, as far as the Complainant is aware, of any of the producers the Complainant represents. The Respondent has not been authorized or licensed by the Complainant to use the name “Champagne”.
(ii) The Domain Name bears no resemblance to the Respondent’s personal name or to the corporate names (Dotco Investments and IT-Box Limited) with which the Respondent appears to be connected.
(iii) Prior to receiving notice of the present dispute, the Respondent was not making, and has not since made, any use or apparent demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent intended at some point to sell the Domain Name as a generic domain name to somebody who might be interested in using it, but he has no intention to use the Domain Name himself.
(iv) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. He is not using the Domain Name, and has only registered it to sell it on at a later date. The Respondent views the Domain Name as an “attractive generic domain name”, but the name “Champagne” is famous throughout the world, and the United Kingdom is one of its biggest markets. It denotes a sparkling white wine produced exclusively in the Champagne region of France.
(v) In order to establish that the Domain Name was “an attractive generic domain name to own”, the Respondent must have researched the ownership of similar domain names before registering the Domain Name. The Complainant holds 27 gTLDs and ccTLDs with the name “champagne”, including the ccTLD <champagne.co.uk> and the gTLD <champagne.com>, and both revert to the Complainant’s websites. The Complainant has a further 101 domain names which include “Champagne” as part of the name. A Whois search by the Respondent would readily have identified the Complainant as the person with legal rights to the name “Champagne”.
10. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following contentions:
(i) The Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to a third party for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. The Complainant refers to the correspondence between its representative and the representative of the Respondent in February 2011, in which the Respondent’s representative stated that the Respondent “intended at some point to sell [the Domain Name] as a generic domain name to somebody who might be interested in using it”. No purchase price was offered and it is apparent to the Complainant that since the Respondent does not intend to use the Domain Name himself, he registered it simply to sell the Domain Name to a third party for valuable consideration.
B. Respondent
The Respondent contends:
1. The Complainant bases its claim principally on unregistered rights. However, the Complainant offers no clear explanation as to why and how the term “champagne”, which is both a dictionary and a highly descriptive word, should be considered as capable of generating unregistered rights for the purposes of the UDRP (referring to the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 1.7). Far from providing “compelling evidence of secondary meaning or distinctiveness”, as required by paragraph 1.7 of the WIPO Overview 2.0, the Complainant has produced only a brief document which lists the alleged volumes of sales of champagne in various countries. There is no further detail or explanation of the source of the document, part of which is written in French. That part must be disregarded, as the language of the proceeding is English.
2. None of the four other “champagne” domain name disputes referred to by the Complainant involved cases under the UDRP. Furthermore, those decisions were based on their own facts and evidence. Nor has the Complainant provided any explanation of the circumstances which were before the courts which decided the cases heard in the Paris District Court and the United Kingdom Court of Appeal, to which the Complainant referred. There was no explanation of the legal issues which arose in those cases, nor any explanation of their alleged relevance to the present case.
3. The Complainant has failed to provide any proper explanation of the background and purpose of Council Regulation EC 491/2009. So far as the Respondent can tell, this Regulation amends a previous 2007 regulation setting out a framework whereby, among other things, producers can apply for certain terms to be protected as designations of origin. The Complainant has not even provided any evidence in support of its assertion that “champagne” has achieved the status of a protected designation of origin.
4. In any case, the Complainant has also failed to explain why this Regulation should be treated as generating rights for the purpose of paragraph 4(a) of the Policy, which refers only to “trademarks” and “service marks”. Paragraph 1.5 of the WIPO Overview, 2.0, observes that the report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending protection to geographical terms under the UDRP. The WIPO Overview 2.0, paragraph 1.5, points out that such terms can only be protected under the UDRP if the Complainant has shown that it has rights in the term and that the term is being used as a trademark for goods and services other than those that are described by or related to the geographical meaning of the term (secondary meaning). The Complainant has failed to provide evidence to such effect.
5. The fact that the Complainant owns various domain names for “champagne” does not of itself show that it has acquired any trademark rights in the term “champagne”.
6. Rights or legitimate interests in the Domain Name – the Respondent accepts that he does not fall within any of the three non-exhaustive examples of rights or legitimate interests listed in paragraph 4(c) of the Policy. Nonetheless, the Respondent contends that he had rights and legitimate interests in registering a domain name which he reasonably perceived to be generic, for the purposes of resale.
7. The Domain Name was not registered in bad faith and is not being used in bad faith. The Respondent relies on the following contentions:
(i) The Respondent was not aware of the Complainant when he acquired the Domain Name, and was not aware that the term “champagne” was a controlled appellation of origin under French law, or in some other way legally protected. Nor did the Respondent have any reason to be so aware. He is in the IT support and computer sales business, and does not trade in champagne or beverages of any kind.
(ii) The term “champagne” is a dictionary term. Generally, dictionaries include one entry in upper case (“Champagne”) referring to the region in France, and another in lower case (“champagne”) referring to the wine. There is nothing in any of these listings which refers to the Complainant, or which gives any hint that the name might have some form of legal protection attaching to it. Indeed, the lower case usage clearly indicates the general perception of the term as a descriptive/generic one. The expression “champagne” is in common use in the United Kingdom as a descriptive/generic term for a kind of sparkling wine.
(iii) The Complainant says that the Respondent “must have researched the ownership of similar domain names” before registering the [Domain Name]”. Even if the Respondent had checked, it is unlikely he would have found anything clearly explaining the existence and nature of legal rights in the term “champagne” which might affect the use of that expression in the United Kingdom.
(iv) The Complainant’s case based on bad faith appears at first sight to be based on paragraph 4(b)(i) of the Policy, but the Complainant has failed to allege that the Respondent’s alleged purpose was to sell the Domain Name “to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant”. Instead, the Complainant has altered the wording of paragraph 4(b)(i) of the Policy, referring to the Respondent’s alleged purpose in registering the Domain Name as being “… for the purpose of selling … to a third party for valuable consideration …”. That alteration from the wording of paragraph 4(b)(i) of the Policy is an admission by the Complainant that the Respondent was not aware of the Complainant or the alleged legal status of “champagne” at the time of registration.
(v) It has been held in numerous UDRP cases that the purchase and resale of generic domain names are of themselves entirely legitimate activities (referring to Media General Communications Inc. v Rarenames, WebReg,
WIPO Case No. D2006-0964).
(vi) The case of Consorzio del Prosciutto di Parma v Domain Name Clearing Company, LLC,
WIPO Case No. D2000-0629 (concerning the domain name <parmaham.com>) was similar to the present case, in that it involved a passive holding of the disputed domain name. The panel in that case held that there was no evidence that the respondent attempted to sell the disputed domain name to the complainant or to a competitor of the complainant, or that any of the other factors in paragraph 4(b) applied. The panel in the <parmaham.com> case went on to consider whether there were any other circumstances showing bad faith. The panel rejected the complainant’s allegation that the expression “parma ham” had no meaning or significance other than as a mark identifying the products of the same name. The panel in <parmaham.com> went on to say that the terms “Parma ham” do have meaning for consumers: they mean “ham made in the region of Parma”. Consumers have no reason to know that “PARMA HAM” is a registered trademark, since it has a very understandable meaning (“ham from Parma”), and is used in the every day language as a descriptive term. The Panel in parmaham consider as a consequence that the complainant had not satisfied its burden of proof as far as registration in bad faith was concerned.
(vii) The Panel in <parmaham.com> also held that the terms “Parma ham” were not widely recognized as a trademark, because of their descriptive meaning. Similarly in this case, “champagne” has an obvious descriptive meaning, namely a kind of sparkling wine (possibly emanating from France). The public have even less reason to be aware of any legal rights than in the parmaham case, as in this case the Complainant does not even rely on a registered trademark: the legal status of “champagne“ is vague and esoteric. The Complainant does not even argue that the Respondent was or should have been aware of the Complainant or the alleged legal status of “champagne” at the time of registration of the Domain Name, or that it was unreasonable for the Respondent to consider the term generic/descriptive.
8. This is a case of reverse domain name hijacking. The Complainant, a sophisticated organization which is professionally represented, cannot seriously have thought that it had a real prospect of winning this case. In particular, the Complainant has not sought seriously to argue that the Respondent was or ought to have been aware of any legal rights attaching to the term “champagne” at the time of registration of the Domain Name. The Complainant was obviously aware of this fatal deficiency in its case given its attempted modification of the Policy.
6. Discussion and Findings
A. Procedural Issues
(i) Complainant’s Requests for Extensions of Time to Answer Panel Questions
(ii) Complainant’s Request to Withdraw the Complaint and have the Proceeding Terminated
(iii) Complainant’s Requests for Extensions of Time to Answer Panel Questions
In its Procedural Direction No 1, a copy of which is included in Annex 1 to this Decision, the Panel requested that the Complainant submit any further statement addressing the three issues raised by the Panel, by May 27, 2011. The Complainant’s representative responded with a request for an extension of time to submit the further statement, until June 10, 2011. By Procedural Order No 2 made on May 26, 2011, the Panel noted that the Complainant’s representative had received a copy of the Panel’s Procedural Order No 1 somewhat later than the Panel had anticipated. Accordingly, the Panel extended the time for the Complainant to submit its further statement until 5pm on Tuesday, May 31. In its Procedural Order No 2, the Panel noted that any request by the Complainant for a further time extension beyond May 31, would need to be properly supported by compelling reasons. The Panel noted that under the Rules it was obliged to ensure that the proceeding takes place with due expedition, and that timeframes under the UDRP are generally tight. The Panel noted that if there were any request for a further time extension, the Panel would wish to hear from the Respondent on the point.
The Complainant made a request for a further time extension, by email dated May 26, 2011. It pointed out that May 30, 2011 is a public holiday in the United Kingdom, and that the effect of the extension granted by the Panel would only provide the Complainant’s representative with an extra 24 hours to prepare a response to the Procedural Direction No 1. The Complainant’s representative submitted that answering the issues raised in Procedural Direction No 1 would require extensive analysis of UK case law, Nominet case law, the commentary of Mr. David Lindsay (a reference to a text on international domain name law referred to in Procedural Direction No 1), and an extensive analysis of WIPO panel views on the protection of geographical terms. The Complainant’s representative submitted that it was vital that the Complainant be given time to prepare a response with the benefit of full consideration of the case law and commentary on the matter. Attention was drawn to the absence of any appeal procedure under the UDRP. The Complainant’s representative also submitted that, as the Respondent was allowed 20 calendar days to respond to the original Complaint, the time given to the Complainant to respond to Procedural Direction No 1 was disproportionate to the period allowed to the Respondent. The Complainant’s representative advised that the Complainant had no objection to a similar amount of time being given to the Respondent to prepare his reply. The Complainant also pointed out that, as the Respondent was not using the Domain Name, an extension of time would not prejudice the Respondent.
The Respondent objected to any time extension beyond May 31, 2011. The Respondent drew attention to paragraph 10(b) of the Rules, under which the Panel is to ensure that administrative proceedings under the Policy take place with due expedition, and submitted that time extensions are envisaged only in exceptional cases. The Respondent contended that all of the matters raised by Procedural Order No 1 could have and should have been addressed by the Complainant in its original Complaint. The Respondent also noted that the Complainant must have been intimately familiar with the Nominet UK appeal panel decision referred to in Issue No 1 of Procedural Direction No 1, and with the concept of extended passing off and the Taittinger v Allbev case, the Complainant having been involved in both cases and having referred to them in its Complaint. The Respondent also rejected the need for an “extensive analysis” of the issues raised by the Panel, submitting that the UDRP objectives of expeditious and inexpensive resolution of domain name disputes would be compromised by very lengthy and detailed legal submissions from the Complainant.
The Respondent also submitted that Issue 2 in Procedural Direction No 1 could hardly have come as a surprise to the Complainant, which is a sophisticated entity and must be highly aware of the issues concerning geographical terms and the UDRP. The comment in the WIPO Overview, 2.0 concerning geographical terms was available to the Complainant before it filed the Complaint.
Finally, the Respondent submitted that the 20 day period allowed to a respondent to file a response under the Policy is not comparable to the period to be set for the Complainant’s response to a procedural direction.
Having considered the parties’ submissions, the Panel granted an extension of one day, to June 1, 2011, for the Complainant to submit any statement in response to Procedural Direction No 1. Essentially for the reasons advanced by the Respondent’s representative, the Panel saw no substantial basis for the further extension of time sought by the Complainant.
Question 1 posed by the Panel in its Procedural Direction No 1 was signalled quite clearly by the Nominet UK appeal panel decision in Comité Interprofessionnel du vin de Champagne v. Jackson, which the Complainant itself produced.
Question 2 was signalled, equally clearly, by paragraph 1.5 of the WIPO Overview, 2.0, and by the very nature of the Domain Name. Furthermore, the Panel notes from the Final Report of the Second WIPO Internet Domain Name Process that the interests of winegrowers (presumably including those from the Champagne region of France) were advanced by submissions made in the course of the Process, including by the Office international de la vigne et du vin, and by the French Governmental organization “Institut national des appellations d’origine”, being the body charged with the protection of appellations of origin and geographical indications for food and agricultural products. And the Complainant itself stated in its Complaint that it has “repeatedly sought to prevent abuse of the name “Champagne”, by third party use of domain names….” It was a party in the 1993 Taittinger v. Allbev case, and has quite clearly spent a good part of the ensuing 18 years vigorously pursuing the intellectual property rights which it has in the expression “champagne”. In short, the Complainant had weeks (if not months or years) before it filed the Complaint, to focus on the issues 1 and 2 raised in Procedural Order No 1. Comparison with the 20 days allowed to a Respondent under the Policy to file a response, was wholly irrelevant.
As for issue 3 in Procedural Direction No 1, the Panel could see no reason why it would have taken the Complainant more than a few minutes to provide an answer. Certainly the Complainant did not explain why any longer period was considered necessary.
In the end, the dictates of the Policy that the administrative proceeding should be resolved with expedition, were not displaced by the submissions made by the Complainant in the May 26, 2011 email from its representative. The only point which did concern the Panel, was the possibility that the Complainant or its representatives might have been embarrassed by other commitments made on account of the public holiday in the United Kingdom on May 30, 2011 (which the Panel had not taken into account in setting the May 31 response date). Accordingly, the Panel extended the time for the further statement to June 1, 2011.
(ii) Complainant’s Request to Withdraw the Complaint and have the Proceeding Terminated
The Complainant’s request that the proceeding be terminated, fell to be decided under paragraph 17 of the Rules. That rule provides as follows:
“17. Settlement or Other Grounds for Termination
(a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.
(b) If, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.”
There has been no settlement in this case, so paragraph 17(a) cannot apply. (The Complainant’s request was only a request to withdraw its Complaint “at this stage”, and that request was rejected by the Respondent). Any jurisdiction to terminate the proceeding therefore had to be found in paragraph 17(b), which allows a panel to terminate an administrative proceeding if it becomes unnecessary or impossible to continue the proceeding for any reason, or if a party raises justifiable grounds for objection to the termination of the proceeding. Clearly it was not “impossible” for the Panel to continue this proceeding, so the issues were whether it was “unnecessary” for the Panel to do so, and whether the Respondent had raised any justifiable objection to the termination.
In the particular circumstances of this case, the Panel was not persuaded that the Complainant’s unexplained request to withdraw its Complaint “at this stage” rendered it unnecessary for the proceeding to continue. First, it was not made clear what the Complainant meant when it said that it wished to withdraw the Complaint “at this stage”. Did that mean that the Complainant was reserving the right to refile the Complaint, perhaps with extensive additional evidence, or possibly merely in the hope that a different panel would be appointed? In the Panel’s view, it would not be fair to the Respondent, which had been put to the expense and trouble of filing a substantial response, if it were obliged to go through that process again. The position might have been different if the Complainant had sought to withdraw the Complaint at an early stage after filing, but in this case the Respondent had put in a significant amount of work responding to the Complaint. In the Panel’s view, that factor pointed strongly in favor of allowing the proceeding to continue. In the Panel’s view, it also provided a “justifiable objection” by the Respondent to the termination of the proceeding on the Complainant’s request.
A second consideration was that the Respondent had alleged reverse domain name hijacking in its Response, and that issue had not been resolved when the Complainant made its request to withdraw its Complaint. If the Panel had elected to terminate the proceeding, that issue never would have been resolved. Under paragraph 15(e) of the Rules, if a panel finds that a complaint was brought in bad faith, the Panel is obliged to declare in its decision that the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding. In this case, the Panel formed the view that the Respondent’s allegation of reverse domain name hijacking was not so clearly untenable that it could be dismissed out of hand.
A third factor in the Panel’s decision to decline to terminate the Complaint, was that allowing the Complainant to withdraw the Complaint at such a late stage could open the door to what might be loosely described as “forum shopping”. As the three-member panel noted in Sensis Pty Ltd, Telstra Corporation Limited v. Yellow Pages Marketing B.V., WIPO Case No. D2011-0057:
“It is conceivable that a well-funded complainant could simply refile successive complaints until it found a panel willing to order the transfer of the disputed domain name. This would not be a fair burden to impose on respondents, it would not be an efficient use of the resources of the dispute resolution provider, and it would not promote consistency and predictability in UDRP decisions.”
While that case was concerned with a re-filed complaint following an unfavorable decision in an earlier proceeding, which is not the case here, the Panel formed the view that it would be unfair to the Respondent in this case if the Complainant, having considered the issues raised by the Panel, were permitted to “live to fight another day” by simply withdrawing its Complaint (hoping that a subsequent, re-filed Complaint would meet with a more favorable reception from a different panel).
Finally, the Panel notes that there are numerous registered domain names which include the expression “champagne” (or some close variant of that word), and that the Complainant says that it has “repeatedly sought to prevent abuse of the name “Champagne” by third party use of domain names, most of which situations are resolved without the necessity for formal action”. The Panel is not told whether some of those domain names have been registered under registration agreements to which the UDRP applies, but it seems not unlikely that some of them may have been. If there is some doubt over whether the Complainant’s rights in the expression “Champagne” constitute a trademark or service mark within the meaning of paragraph 4(a)(i) of the Policy, and that doubt may be affecting the positions of the registrants of other “champagne-related” domain names, there is arguably a need for a panel decision on the point. That consideration also favored the view that continuing the proceeding was not “unnecessary”, in terms of paragraph 17(b) of the Rules.
B. What the Complainant must prove under the Policy –General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
C. Identical or Confusingly Similar
What Rights does the Complainant hold in the Expression “Champagne”?
The Complainant clearly has rights in the expression “champagne” as an appellation of origin under French law (in particular, under Article L 721-1 of the Intellectual Property Code of France, and Article L 115-1 of the French Consumer Code – “an appellation of origin shall consist of the geographical name of a country, region or locality that serves to designate a product originating therein, the quality or characteristics of which are due to the geographical environment, including both natural and human factors”). That the Complainant holds such a right is clear e.g. from the decision of the Expert in the .fr decision produced by the Complainant, namely CIVC v. Internet SARL, Case No. DFR2005-0006.
The Complainant also says that “Champagne” is protected as a “designation of origin” under Regulation EC 491/2009. The Complainant did not provide a copy of that regulation, nor show that the expression “champagne” has the designation under the Regulation for which the Complainant contends, and that the Complainant is the owner of that designation. However, the Panel notes that in the .i.e decision produced by the Complainant (CIVC v Richard Doyle, Case No. DIE 2007-0005), the Complainant contended that it had rights pursuant to the provisions of Council Regulation (EC) No 1493/1999 as a “sectoral organization on the common organization of the market in wine”. The decision in the Doyle case recorded the Complainant’s submission that under title II, Chapter II, Article 41-4 (viii), of Council Regulation No 1493/1999, the Complainant held rights to carry out some measures, among which, exploiting the potential of and protecting organic farming as well designations of origin, quality labels and geographical indications. The Complainant went on to submit in Doyle that “Champagne is one of the quality wines produced in specific regions – as referred in the same Regulation under title VII Art 54 of the Regulation and in the list of quality wines produced and specified regions…”.
The Complainant provided no similar explanation in the present proceeding, and did not provide the Panel with a copy of (or online reference to) the EC Regulation on which it relies. Nevertheless, on the evidence as a whole, including the Irish and French domain name decisions produced by the Complainant, and the decision of the Nominet UK appeal panel in CIVC v Jackson, the Panel is satisfied that the Complainant does hold rights in the expression “Champagne” as an appellation of origin, or as a protected designation of origin, or geographical identifier, under relevant European Regulations.1
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?
Paragraph 4(a)(i) of the Policy quite clearly requires that the complainant show that it holds rights in a trademark or service mark, and the WIPO Overview, 2.0, paragraph 1.5, summarizes the consensus view of WIPO Panels on the issue of UDRP – relevant rights in a geographical term or identifier, in the following terms:
“Consensus View: the report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending protection to geographical terms under UDRP. Some geographical terms, however, can be protected under the UDRP, if the complainant has shown that it has rights in a term and that the term is being used as a trademark for goods or services other than those that are described by or related to the geographical meaning of the term (secondary meaning).”
In the WIPO Final Report on the First Domain Name Process, the authors stated:
“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. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications.”2
The WIPO Final Report on the Second Domain Name Process (“the Second WIPO Report”) declined to recommend any extension of the Policy to protect geographical identifiers as such. The Second WIPO Report, released on September 3, 2001, acknowledged that there were existing international norms that prohibited false and deceptive indications of geographical source on goods, but noted that those norms were confined to the use of terms on goods, and that there was no uniformly agreed international list of geographical indications. The report concluded that the international framework needs to be further developed before the use of geographical indications as domain names could be adequately addressed.
There has been no change in that position: geographical indications, as such, remain outside the scope of the Policy.
Has the Complainant Shown that it holds Trademark or Service Mark Rights in a “Champagne” Mark?
The Complainant does not contend that it holds any registered trademark or service mark (including any certification mark or collective mark). It relies purely on rights which it says it holds under the English law of passing off.
The problem for the Complainant is that, while a trader may in appropriate circumstances have recourse to the English law of passing off to protect unregistered rights which it has in a trademark or service mark, the converse does not necessarily apply: the fact that a trader might have a right to sue in passing off (for damage to the goodwill attaching to its business, caused by some misrepresentation of the defendant) does not necessarily imply that the trader holds an unregistered trademark or service mark. In his text “International Domain Name Law”, Lindsay notes:
“The following principles arise from the above discussion of the problems of establishing common law trademark rights by means of the English action for passing off:
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.
Therefore in order for an action for passing off to arise for unauthorized use of the term, the term must be a mark. This means that the term must have become distinctive (acquired a secretary meaning) by virtue of use.
The distinctiveness required to bring an action for passing off is different from, and may be less than, the level of distinctiveness required for a mark to be registered.”3
Specifically in respect of geographical terms, Lindsay notes:
“In order to be protected as a common law mark under the English action for passing off, a geographical term must have become distinctive of the goods or services of a trader. If, however, the term retains its descriptive meaning, for example as the locality in which a particular product is produced, then it is not a passing off for other traders to use the term in a descriptive sense. Cases in which an action for passing off is available in relation to a geographical term that has become distinctive should be distinguished from cases in which an action arises from a misrepresentation that goods are associated with a particular geographical area. In the latter case, the plaintiff does not have a common law trademark right in the geographical term [citing Bollinger v Costa Brava Wine Co Limited [1960] Ch 262; Vine Products v MacKenzie [1968] FSR 625].”
The Complainant has referred to the decision of the United Kingdom Court of Appeal in Taittinger, and in particular to a passage from the judgment of the Master of the Rolls in that case. At pages 674 to 675 of the report, the Master of the Rolls referred to the earlier decision of the Court of Appeal in HP Bulmer Limited and Shawerings Limited v J Bollinger SAand Champagne Lanson Père et Fils [1978] RPC 79, at 93 and 94, where Buckley LJ noted in respect of the action for passing off:
“This proprietary right recognized by the law [of passing off] is not a right in the name, mark or get-up itself: it is a right in the reputation or goodwill of which the name, mark or get-up is the badge or vehicle” (citing, among other cases, the decision of the House of Lords in AG Spalding Brothers v. AW Gamage Limited (1915) 32 RPC 273 per Lord Parker at 84).
Further, the Nominet UK appeal panel in CIVC v. Jackson, while noting that goodwill in the name “Champagne” has been recognized in the English Courts on numerous occasions, went on to say:
“Nevertheless 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 branded name ….”
In this case, the Panel is not satisfied that the Complainant has shown that its rights in the expression “Champagne” constitute an unregistered trademark right of the kind that would satisfy paragraph 4(a)(i) of the Policy. First, the Panel notes that it is generally accepted that, to be a trademark, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings4.. It seems to this Panel that a geographical indication per se does not 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. A geographical indication is essentially designed to achieve a somewhat different purpose, namely to protect the producers of a particular region from loss caused by traders wrongfully applying that identifier to goods which have not been produced in the particular region, thereby appropriating to themselves the goodwill arising out of the reputation for quality which the producers of the protected products have built up. 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.
More fundamentally still, this Panel finds it apparent from the WIPO Reports referred to above that the framers of the Policy did not intend that geographical indications or “protected designations of origin” should provide a basis as such for a “right” under paragraph 4(a)(i) of the Policy. That intention could be easily defeated if the fact that a protected geographical indication may happen to be enforceable under the UK law of passing off were somehow regarded, and solely on that basis, as necessarily conferring unregistered trademark or service mark status on that geographical indication for the purpose of establishing standing under the first element of the Policy.
While every protected geographical indication may inevitably become distinctive of the reputation for particular style or quality which is associated with the relevant protected goods, it seems to this Panel that that is not the kind of “acquired distinctiveness” which will of itself be enough to confer “trademark or service mark” status for the purposes of paragraph 4(a)(i) of the Policy. As this Panel sees it, to hold otherwise would be to turn on its head the decision made by the framers of the Policy, that geographical indications as such would not be within the Policy’s scope. “Champagne” may be among the world’s most famous geographical indications, but that in itself is not enough for it to qualify as an unregistered “trademark or service mark” under the Policy. For a geographical indication to be found to have acquired such status, something more than potential eligibility to succeed in a passing off action would be required. In particular, it would be necessary to show distinctiveness as an identifier of an individual trade source. On the record in this proceeding, the Panel is not persuaded that the Complainant has proved that kind of distinctiveness under the Policy. The Complainant’s claim that it possesses unregistered trademark rights in a “Champagne” mark has therefore not been made out. There having been no evidence provided to the Panel of the Complainant possessing any relevant registered trademark or service mark, the Complainant has failed to make out its case under paragraph 4(a)(i) of the Policy.
It remains to mention that none of the four administrative proceedings in which the Complainant succeeded in having “champagne-related” domain names transferred to it, assist it in this case. 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 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.
For the foregoing reasons, the Complaint must be denied.
D. Rights or Legitimate Interests
In view of the Panel’s findings in section 6C of this decision, it is unnecessary for the Panel to address this issue.
E. Registered and Used in Bad Faith
In view of the Panel’s findings in section 6C of this decision, it may not be strictly necessary for the Panel to make any finding on this issue. However the Panel notes that it would also have found for the Respondent on this issue.
The only allegation of bad faith registration and use made by the Complainant, was that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a third party for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. That allegation almost mirrors the kind of evidence of bad faith registration and use which is described at paragraph 4(b)(i) of the Policy:
“circumstances indicating that the [respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] out-of-pocket costs directly related to the domain name.”
However the Complainant has not alleged that the Respondent’s intention was to sell, rent, or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant - just that the Respondent’s primary intention was to rent, sell, or otherwise transfer the Domain Name to a third party. And even if the Complainant had said that the Respondent’s intention was to sell, rent, or otherwise transfer the Domain Name to the Complainant at a profit, the Panel has found that the Complainant is not in fact “the owner of the trademark or service mark”, as those words are used in paragraph 4(b)(i). The Complainant’s allegations therefore do not bring it within paragraph 4(b)(i) of the Policy, and the Complainant has not specified any other ground on which the Complainant is said to have been guilty of bad faith registration and use of the Domain Name. Trading in domain names is not per se contrary to the Policy (see, for example, Media General Communications Inc., cited by the Respondent).
F. Reverse Domain Name Hijacking
In Ville de Paris v. Salient Properties Limited,
WIPO Case No. D2009-279, the three-member panel explained the concept of reverse domain name hijacking, in the following terms:
“Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that a complainant has brought the complaint in bad faith (for example in an attempt at reverse domain name hijacking), or was brought primarily to harass the domain name holder. “Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,
WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Al Jazeera went on to note that:
‘Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line,
WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited,
WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate Search,
WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.’”
In this case, the Respondent submits that the Complainant cannot seriously have thought that it had a real prospect of winning this case. He contends that the Complainant has not seriously sought to argue that the Respondent was or ought to have been aware of any legal rights attaching to the term “champagne” when the Domain Name was registered in July 2010. The Respondent refers to the Complainant’s “attempted modification of the Policy” (a reference to the manner in which the Complainant sought to invoke paragraph 4(b)(i) of the Policy), in support of a contention that the Complainant was obviously aware of “this fatal deficiency in its case”.
The Panel has given careful consideration to the Complainant’s bona fides in bringing the present Complaint. First, the Complainant and its advisers must surely have been aware of the need to establish trademark or service mark rights under paragraph 4(a)(i) of the Policy, and of the fact that attempts to amend the Policy to bring geographical indications within its ambit (a major area of focus in the Second Domain Name Process) had been unsuccessful. For a long time, and in many parts of the world, the Complainant has been at the forefront of battles over its intellectual property rights in the name “champagne”, and it seems unlikely that it would not have appreciated the issue over the precise nature of its rights in that expression, and whether they could be said to be “trademark or service mark” rights. Yet the Complainant did not address the issue in any detail, instead electing to provide the Panel with apparently incomplete detail of its rights in “champagne” as a protected designation of origin, referring to favorable domain name decisions it had secured in other cases which turned out to have been decided on policy provisions which differed materially from those of the UDRP, and arguing, without significant analysis, that it had trademark rights because it was entitled to sue in the UK under the law of passing off.
Further, the Respondent is correct in pointing out that the Complainant failed to articulate a clear basis on which the Respondent could be found guilty of bad faith registration and use of the Domain Name. The Complainant did nothing more than assert that the Respondent registered the Domain Name in order to sell it to a third party at a profit, and that could never be sufficient, on its own, to establish bad faith registration and use. There is nothing in the Policy which per se prevents trading in domain names at a profit (Media General Communications Inc.), and the Complainant made no allegation that the Respondent’s intention had been to sell the Domain Name (at a profit) to the Complainant or to acompetitor of the Complainant (a circumstance which might have brought the Complainant within paragraph 4(b)(i) of the Policy).
Those were the primary difficulties in the Complainant’s case, and like a number of cases where reverse domain name hijacking is alleged, the Panel’s dilemma is to decide whether the defects in the Complainant’s case are the result of bad faith overreaching on its part (proceeding with the Complaint in the full knowledge that it could not succeed), or whether the defects resulted simply from a failure to fully appreciate the issues, and/or the kind of evidence that would be required.
It may be thought unlikely that a party as sophisticated in matters relating to intellectual property litigation as the Complainant would not have appreciated in advance the difficulties it would face in advancing the present Complaint. And yet there are some factors that suggest that maybe it did not. First, this was not a case where the Complainant could have thought that the Complaint would probably not be defended, and that a poorly prepared Complaint might “sneak through” without too much in the way of panel scrutiny – the correspondence between the parties’ representatives before the proceeding was commenced would have made it clear to the Complainant that the Respondent had competent legal representation, and that any proceeding under the Policy would likely be defended. That tends to suggest that the Complainant still thought it had a good case when it presented the Complaint. Secondly, the issues relating to the relationship between unregistered trademark rights and the English cause of action in passing off were clearly signaled in the UK appeal panel decision in CIVC v Jackson, which the Complainant itself produced. If the Complainant appreciated the nature of those issues (and the significance of the passage in CIVC v. Jackson which adverted to them) but made a bad faith decision to proceed with the Complaint anyway, one might have expected it not to produce the CIVC v. Jackson case. But it did, and that fact seems to the Panel to point more towards incomplete thinking than to bad faith. A third factor which weighs in the Complainant’s favor on the issue of reverse domain name hijacking, is that the relationship between the tort of passing off in UK law and the existence or otherwise of unregistered trademark rights, is clearly not free from complexity. A bona fide complainant, even assisted by a legal adviser, could get it wrong.
Further, the Complainant’s arguments directed to the question of bad faith registration and use, although made inadequately, could hardly have been dismissed as obviously hopeless if the Complainant had succeeded in establishing trademark rights in a “Champagne” mark. If the Complainant had reached that point, the Respondent would have been seen to be in possession of a domain name that would have been difficult for him to use, and the Complainant would have been the obvious buyer for it. It would perhaps also have been understandable if the Complainant viewed with a degree of skepticism the Respondent’s claim that he did not know that the expression “champagne” was subject to legal protection in the UK – the Respondent is a businessman in that country, and it is now more than 50 years since the UK courts first upheld claims by winemakers from the Champagne region of France seeking to prevent others from marketing in the UK sparkling wines described as “champagnes” (Bollinger v. Costa Brave Wine Co. Limited [1960] RPC 16, referred to by the Nominet UK appeal panel in CIVC v. Jackson).
Weighing up the foregoing considerations, the Panel does not consider that a finding of reverse domain name hijacking is appropriate. The Complainant’s arguments have proved inadequate on the papers and evidence presented in this particular Policy proceeding, but the Panel is unable to conclude with sufficient confidence that it acted in bad faith in bringing the Complaint.
7. Decision
For all the foregoing reasons, the Complaint is denied, as is the Respondent’s request for a finding of reverse domain name hijacking.
Warwick Smith
Sole Panelist
Dated: June 21, 2011
ANNEX - PROCEDURAL DIRECTION NO. 1
The Panel requests a further statement from the Complainant, addressing the following three issues:
1. Under paragraph 4(a)(i) of the Policy, the Complainant must show that it holds a trademark or service mark to which the disputed domain name is identical or confusingly similar. In this case, the Complainant has asserted unregistered rights in a CHAMPAGNE mark, and it has referred to its claimed mark as being protectable in the United Kingdom under the common law of passing off (Amended Complaint, paragraph 1). In support of its case, the Complainant has produced copies of three decisions in domain name disputes in which it has been complainant, including the Nominet UK appeal panel decision in Comité Interprofessionnel du Vin de Champagne v Jackson (Nominet UK DRS Case No. 4479).
In the Nominet decision just referred to, the appeal panel referred to Bollinger v Costa Brava Wine Co Limited [1960] RPC 16, and to the UK Court of Appeal decision in Taittinger v Allbev [1993] FSR 641, noting that the English courts have previously upheld claims to goodwill in the expression “champagne”. However, the Nominet appeal panel went on to note that “nevertheless 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 …” The Nominet panel went on to hold that the Complainant had established rights in “champagne” as a name (that being sufficient to meet the standing requirements of the Nominet Policy), but there does not appear to have been any finding that the Complainant had established unregistered trademark rights.
The Panel notes further that in his text “International Domain Law” (Hart Publishing, 2007), David Lindsay states that:
“Cases in which an action for passing off is available in relation to a geographical term that has become distinctive should be distinguished from cases in which an action arises from a misrepresentation that goods are associated with a particular geographical area. In the latter case, the plaintiff does not have a common law trademark right in the geographical term.” (page 229, citing Bollinger and Vine Products v Mackenzie [1968] FSR 625).
Having regard to the foregoing, it is not clear to the Panel that a right to sue under the extended form of passing off discussed in cases such as Taittinger and Chocosuisse necessarily implies that a complainant holds an unregistered “trademark or service mark”, for the purposes of paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy. The Panel requests a further submission from the Complainant on that point.
2. In its online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, Second Edition, paragraph 1.5, the Center notes the consensus view of WIPO panels that: “The report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending protection to geographical terms under the UDRP”. On the Complainant’s argument, is not the expression “champagne” an indicator of geographical source or origin of the kind that the WIPO Second Report declined to recommend should be covered by the UDRP?
3. The Panel would appreciate a copy of, or online reference to, the relevant European Council Regulation under which the Complainant says it holds a protected designation of origin, or a protected geographical indication.
The Complainant is requested pursuant to Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy to submit a further statement addressing the above three issues, by 5pm on Friday, May 27, 2011 (Geneva time). The further statement is to be emailed to the WIPO Center, with a copy emailed to the Respondent’s representative by the same date and time. The Complainant’s further statement is to be strictly limited to the three issues set out above.
On receipt of any further statement the Complainant may submit pursuant to this request, the Panel will consider what further procedural directions may be necessary, including whether a direction might be necessary permitting the Respondent to file a supplementary statement in reply. In the meantime, the time for the Panel to give its decision in the case is extended to Wednesday, June 1, 2011.
Warwick Smith
Sole Panelist
Dated: June 21, 2011
1 In the Nominet UK appeal panel decision in CIVC v Jackson (August 2007), the appeal panel concluded that “Champagne” is a term that is specifically protected under European law. The appeal panel went on to say: “There appears to be some confusion as to the exact legislation that applies here. The Complainant refers to Regulation No. 510/2006 but, as the original Expert alludes to in her decision Article 1 of that Regulation now expressly excludes “wine sector” products. So far as we can ascertain, the relevant law here is Council Regulation (EEC) 823/87 (as amended) ....”
2 WIPO Final Report on First Domain Name Process, para 167.
3 David Lindsay, “International Domain Name Law” (Hart Publishing, 2007), pages 208 to 209.
4 See, for example, Article 2 of the European Trade Marks Directive (2008/95/EC)
