Last May, the WIPO Arbitration and Mediation Center issued an administrative panel decision (sole panelist) in the Case No. D2018-0168 concerning the disputed domain name “rioja.com”. The case opposed the Regulatory Board of the PDO Rioja, which contested the disputed domain, and Domain Hostmaster, which had registered it.
Following the Uniform Domain-Name Dispute-Resolution Policy (UDRP) case law, the GI title over the name “rioja”, which is a Protected Designation of Origin (PDO) under Regulation (EU) No 1308/2013 (including unregistered trade mark rights) was not considered valid by the panelist to file a complaint. As the Rioja Regulatory Board had also based its claim upon various registered trade marks, the complaint was admitted: the complainant has trade mark rights and the disputed domain name is identical of confusingly similar to such trade mark, as requested to admit a case by the current UDRP rules . When assessing the bad faith of the domain name registration, though, the panelist surprisingly did not found arguments proving that the registration was made to target the Rioja Regulatory Board trade mark. Even considering that “rioja.com” was inactive at the time of the decision and admitting that this raises questions as to whether Domain Hostmaster removed the domain as a defensive step, the panelist considered that the domain name “rioja.com” was registered purely for its geographical meaning. As a result, Domain Hostmaster kept the domain name “rioja.com”, which as of 18 June 2018, was still inactive. The administrative panel decision is available @ http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2018-0168
This decision confirms the urgent need to update the UDRP and consider GIs a valid title to file a claim. Likewise, it is urgent to monitor the application of the current UDRP to make sure that GIs protected also by a trade mark are not “discriminated” by raising artificially the threshold to prove “bad faith” domain name registrations (on this, see also case No. D2017-0253 concerning “gorgonzola.city”).
These issues were discussed at the end of May at the 2018 INTA Annual Meeting in Seattle, were oriGIn Director Massimo Vittori spoke in favor of GIs protection in the domain names’ space (find here his presentation). Speakers included Charles Goemaere, Deputy General Director at Comite Champagne, Mary Wong, Senior Policy Director at ICANN, Scott Gerien, Partner at Dickenson Peatman & Fogarty, Jonathan Agmon, Senior Partner at Soroker Agmon Nordman, Advocates & Patent Attorneys, and Francine Tan, Director at Francine Tan Law Corporation.
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For more information about gTLDs and GIs see the respective category in the section Policy and Advocacy