August 04 2008
The Comité Interprofessionel du Vin de Champagne (CIVC), the representative body of French champagne producers, filed a complaint concerning the domain name 'champagne.co.uk' in February 2007. Although the complaint was denied at first instance, the CIVC succeeded on appeal, when the panel ordered the transfer of the domain name to the CIVC. The CIVC will doubtless have welcomed this decision with a glass of bubbly, as tradition dictates.
The recovery of the domain name 'champagne.co.uk' was not the first success for the CIVC, which previously obtained transfer decisions for the domain names 'champagnes.fr', 'chmp-pagne.com' and 'champagne.be'. Created in France by the Law of April 12 1941, the CIVC’s objectives are to manage, promote and protect the CHAMPAGNE appellation of origin.
Following the recovery of 'champagne.co.uk', the CIVC became aware of yet another domain name registration on the other side of the Channel, namely 'champagne.ie'. Richard Doyle, an Irish citizen, had registered the domain name in September 2004 to support his business as a licensed wholesale wine merchant. Since February 2003, Mr Doyle had carried on business under the trade name Champers and he used the domain names 'champers.ie' and 'champagne.ie' to promote his business online.
The CIVC considered that the registration of 'champagne.ie' by Mr Doyle infringed its trademark rights in the designation CHAMPAGNE. The CIVC thus filed another complaint with the World Intellectual Property Organization (WIPO), the domain name dispute resolution provider for the '.ie' extension. As the domain name had been registered under the '.ie' extension, the '.ie' Dispute Resolution Policy (IEDRP), adopted by IE Domain Registry Limited, the non-profit making body responsible for running '.ie', applied. The IEDRP was launched by the IE Domain Registry Limited on July 31 2003 and is modelled on the Uniform Dispute Resolution Policy (UDRP). Relevant differences between the IEDRP and the UDRP include the following:
The panel first had to assess whether the word 'champagne' was a protected identifier for the purposes of the IEDR Policy. The respondent had submitted that 'champagne' was not a registered trademark in Ireland, and that, as such, it did not enjoy statutory protection under Irish law. The complainant had argued that it had trademark rights in CHAMPAGNE, but had focused solely on its rights in France and other jurisdictions, and not in Ireland. The complainant had, however, referred to a previous case before an English authority with persuasive standing in Irish courts, which had accepted that the complainant had standing to bring an action in passing off. Also, the panel noted that under the IEDR Policy, a complainant is required only to establish a prima facie case that the designation of origin can be protected under Irish law, which the complainant had met. The complainant had thus satisfied the first element of the IEDR Policy.
The panel then had to assess whether the respondent, as a reseller of champagne, had any rights or legitimate interests in the domain name. The respondent was licensed to sell wine in Ireland and had provided evidence that he was engaged as a reseller of champagne and other wines. The respondent thus argued that he was engaged in a bona fide use of the domain name.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
"a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.
The respondent must also not try to corner the market in domain names that reflect the trademark.”
The respondent in the case at hand was an unauthorized reseller of champagne products. The panel referred to a previous UDRP case, General Electric Company v Optima di Federico Papi,(1) which involved the issue of rights in a domain name that was identical to a trademark and where the registrant had been engaged in unauthorized resale arrangements. The panel in that case stated:
“It is noteworthy...that the Oki Data conditions have generally been applied by panels in cases involving authorized resale or distributorship arrangements. In the relatively limited number of cases where panels have been prepared to find bona fide use in the absence of authorization, the domain names at issue have tended to be at least distinguishable in some way from the complainant’s mark. On balance, the existing panel decisions suggest that where there is no authorization, the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that [the r]espondent has no legitimate interest in this case and the [p]anel has adopted this approach. While the approach of the existing panel decisions may be thought to have potentially anti-competitive effects, it is likely also to lead to greater transparency in the conduct of [online] business and does not, on balance, unduly inhibit competition with the trademark owner.”
The panel adopted the same view in the current case. Given that the respondent was not an authorized reseller and that the domain name was identical to the CHAMPAGNE protected identifier, the panel concluded that the respondent had no rights or legitimate interests in the domain name.
As to the question of whether the domain name had been registered in bad faith, the complainant submitted that the respondent had offered to sell the domain name to the complainant for €19,000, stating that he was “aware of the high value of such a domain name and the current value of potential future earnings of his name". The complainant also argued that the respondent had threatened to sell the domain name to a competitor of the complainant. The respondent argued that he spent a significant sum of money in designing the website and registration fees, thus justifying the asking price.
The panel found that the sum which the respondent was requesting greatly exceeded his outlays, the greater part of which related to design and business costs and was not directly related to the registration of the domain name. The panel also considered that the respondent had threatened to sell the domain name to a competitor of the complainant, which did not support a finding of registration and use in good faith. Finally, the panel observed that the use of the domain name as the address of a website on which competing wines and services were offered amounted to use in bad faith. The panel thus ordered the transfer of the domain name to the complainant.
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