Under the UDRP, a geographical indication (GI) is mostly not protected until a complainant can show that it additionally operates as a commerce or service mark. If a GI is protected beneath trademark legislation, it might fall beneath the remits of the UDRP.
Consorzio per la Tutela del Formaggio Gorgonzola, the homeowners of the GORGONZOLA figurative mark, filed a number of UDRPs via the years. In two latest cases, which date from late May 2021, the Gorgonzola model had seen one among its cases denied whereas the different case resulted in the switch of the area title at subject.
Though Gorgonzola is a protected GI in the European Union, for the function of the UDRP a complaining occasion should solely depend on registered or unregistered trademark rights to show that they’ve standing to file a site dispute.
Guideline 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions discusses the points arising round geographical phrases. Most geographical phrases have to be registered as emblems to fulfil the first UDRP component. In distinctive circumstances, panels could discover that geographical phrases not registered as marks should still be adequate to claim rights. In such cases, the complainant should show that the model acquired secondary that means. This, nonetheless, may be very troublesome in apply beneath the UDRP.
In the Gorgonzola cases, the complaining occasion relied on a figurative mark, which predominately options the Gorgonzola term. As the first component of the UDRP is a low-threshold take a look at, panels have present in all earlier cases that the Gorgonzola model proprietor had adequate standing to file a UDRP case.
Even although most complainants will overcome the first component in the event that they personal a trademark which can also be a geographical term, proving the second and third components of the coverage could also be difficult.
Respondents know that when coping with geographical phrases, they will efficiently justify a authentic curiosity if they will show that they registered and use the term for its that means as a metropolis or location. Most respondents in the Gorgonzola cases relied on this argument. This in the end led to the complainant dropping three out of its 5 disputes held earlier than a panel.
So what classes might be drawn from these two virtually equivalent cases which led to such totally different outcomes?
Gorgonzola used as a geographical identifier
In the first WIPO case (D2021-0690) regarding the area title ‘gorgonzola.data’, the complainant did not fulfil the second component (and by consequence, the third component) of the coverage, even with proof that the respondent had been concerned in earlier cases of dangerous religion registrations.
The respondent proved that the area title at subject was a part of a venture to “promote and supply info on Italian cities” via his portal. The respondent relied on the indisputable fact that Gorgonzola continues to be the title of an Italian metropolis in the hinterland of Milan. Further, he efficiently proved that this area title was a part of a sample of good-faith conduct – proudly owning round 250 different domains bearing the names of Italian cities.
In gentle of the proof offered by each events, the panellist agreed that at this stage, there was no proof to point out that the respondent used or supposed to make use of the area title to draw web customers by exploiting the popularity of the GORGONZOLA mark. However, the panellist fired a transparent warning to the respondent that “ought to that occur, in fact the Complainant can be free to file a case beneath the Policy or in courtroom”.
The ultimate remark raises questions as as to if the panellist was satisfied that the true intent of the respondent was to make use of the area title for its geographical that means. But with out proof to point out the opposite, it dominated in favour of the respondent.
Gorgonzola used to take advantage of its trademark worth
In the second WIPO Case (D2021-0722) rendered solely 10 days after the first one, the model proprietor, this time, gained the case, and the panellist ordered the switch of the area title ‘gorgonzola.blue’ to the complainant.
The Gorgonzola model as soon as once more relied on its figurative trademark to efficiently overcome the first component of the UDRP. Under the second component, the panellist agreed that the respondent primarily registered the area title to take industrial benefit of the goodwill hooked up to the model by displaying pay-per-click (PPC) hyperlinks on the web site, with hyperlinks linked to the cheese product.
The clear goal of the model and the intent of the respondent to profit from person confusion and derive industrial acquire was adequate for the panellist to conclude that it didn’t have a authentic curiosity in the area title and used the area title in dangerous religion.
Comment
The above cases spotlight how model homeowners, who depend on emblems which can be additionally geographical identifiers, have to be cautious when going via the UDRP. Unless a respondent is clearly focusing on the model proprietor and exploiting its popularity for some industrial acquire, the complaining occasion could simply fail beneath the second and third component of the coverage if there may be any doubt in the panel’s thoughts that the respondent could use it for its geographical that means.
Moreover, the Gorgonzola model additionally misplaced two cases again in 2017 for related causes. Both respondents in these cases had been based mostly in the United States, the place the cheese is just not protected as a GI.
The panel in a single case (D2017-0554) said that there was no proof that the phrase gorgonzola was something aside from a descriptive term from a kind of cheese produced in the United States, which was the location of the respondent.
The jurisdiction of a respondent, subsequently, might be detrimental to cases involving a geographical mark. Even beneath the UDRP, these rights stay territorial and thus don’t get pleasure from the similar safety worldwide.
