Geography Reference
In-Depth Information
i.
That the disputed domain name is identical or confusingly similar to a trade
mark or service mark in which the complainant has rights
6.206
Appling para 4(a) of the UDRP, the Panellist addressed first 'what rights does
the Complainant hold in the expression “Champagne”?' The Panel accepted on
the evidence as a whole, including an Irish
210
and French
211
domain name
decision and the decision of the Nominet UK appeal panel in
CIVC v Jackson
,
that the Complainant held rights in the expression 'Champagne' as an appella-
tion of origin, or as a PDO, or geographical identifier, under relevant European
Regulations. However, acknowledging the refusal of the Second WIPO Inter-
net Domain Name Process to recommend specifically extending protection to
geographical terms under the UDRP, the Panellist ruled that rights in a PDO
or a geographical identifier were not sufficient for the Complainant to make out
a case of 'rights' under para 4(a)(i) of the UDRP.
212
6.207
As the Complainant did not hold any registered trade mark or service mark
(including any certification mark or collective mark) that would have placed it
within the policy, it relied on its unregistered trade mark rights, which it said
existed under the English law of passing off. The Panellist observed, in this
regard, 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
trade mark or service mark, the converse did not necessarily apply, that the fact
that a trader might have a right to sue in passing off did not necessarily imply
that the trader holds an unregistered trade mark or service mark.
213
The
Panellist observed that permitting a claimant to assert an unregistered trade
mark right under the law of passing off would defeat the intention of the
framers of the UDRP that GIs or 'protected designations of origin' should not
provide a basis as such for a 'right' under para 4(a)(i) of the Policy.
214
On this
basis the complaint was denied.
215
ii. Registered and used in bad faith
In view of the Panel's findings on the lack of the Complainant's justiciable right
it was not necessary for the Panel to make any finding on the issue of bad faith,
but the Panel noted that it would also have found for the Respondent on this
issue.
216
6.208
210
CIVC v Richard Doyle
, Case No DIE 2007-0005.
211
CIVC v Internet SARL
, Case No DFR2005-0006.
212
Ibid, at paras 71-4.
213
Ibid, at para 76.
214
Ibid, at para 79 applying the decision of the Nominet UK appeal panel in
CIVC v Jackson
(Nominet UK DRS
Case No 4479).
215
Ibid, at para 80.
216
Ibid, at para. 86.
