oriGIn Alerts 23 May 2016: #Lambrusco #.wine #UDRP

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#Lambrusco #.wine #UDRP

On April 29, a decision concerning ”lambrusco.wine” was issued by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP).

The domain “lambrusco.wine” was registered on 26 January by a Spanish entity. Following this, on February 5, the “Consorzio Vini Mantovani”, the “Consorzio per la Tutela dei Vini Reggiano e Colli di Scandiano e di Canossa” and the “Consorzio Tutela del Lambrusco di Modena” (the Complainants) – associations responsible for the Geographical Indication (GI) Lambrusco – filed a complaint at WIPO, seeking the transfer of the domain to the “Consorzio Tutela del Lambrusco di Modena”. A single-member panel was appointed to deal with the case. The Complainants relied on their community collective trademark as well as on a number of national trademarks around the world and submitted documents proving the reputation of the GI Lambrusco. Moreover, the name “Lambrusco” had been registered in the Trademark Clearinghouse (TMCH) based on the trademark title. The Complainants mentioned that the second level domain name at issue was identical to their trademark and that current owner had no rights to such domain name. They also argued that “lambrusco.wine” had been registered and used in bad faith. The owner of the domain name ”lambrusco.wine” failed to provide a reply to these arguments.

The panelist noted that the UDRP allows complainants to base their claims on collective marks, referring to previous decisions concerning the domains “parmigiano.org”, “spumanteasti.net” and “spumanteasti.info”. He found that the domain name at issue was identical to the trademark owned by the Complainants. The fact that it was registered in the “.wine” generic top-level domain was considered as having the potential to even increase the risk of confusion. As for the requirement of the UDRP concerning the bad faith, the change made by the owner of the domain name ”lambrusco.wine” following the receipt of the complaint (he had modified the contents of the web site, using the wording LAMBRUCO WINE, without the letter “S”) and the lack of submission of a response, were considered by the panelist as proof that the domain name at issue was registered and used in bad faith. In light of the above, the panelist ordered to transfer the domain name ”lambrusco.wine” to the “Consorzio Tutela del Lambrusco di Modena”.

The full decision is available (in Spanish) @ http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0381

This case confirms that GIs groups have to remain vigilant with respect to the registration of GIs as second level domain names. In the case at issue, the activation of the UDRP (as well as the registration of “Lambrusco” in the TMCH) was based on the trademark title. In fact, historically, GIs have not been considered sufficient basis for a complaint under the UDRP. However, following the launch of the new gTLDs in 2014, GIs protected under an international treaty can be registered in the TMCH (“marks protected by statute or treaty”). In this respect, the GI “Prosecco” has been registered in the TMCH on the basis of the GI itself. Once GIs have been admitted in the TMCH, they are de facto recognized as distinctive signs that deserve protection in the domain name system. It would be interesting to verify whether, such GIs would also have access to the UDRP (as well as to the Uniform rapid Suspension – URS – proceedings) without the need to prove that the name is also protected by a trademark. Access to dispute resolution mechanisms for GIs themselves seems a logical consequence of their acceptance in the TMCH.


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