Geography Reference
In-Depth Information
(e)
Consorzio del Prosciutto di Parma v Matthias Gasser, Hanslmeier
Fleischwarenfabrik
226
The Complainant was a consortium of certified producers of Parma ham and
the owner of registrations of the certification marks 'PARMA', 'PRO-
SCIUTTO DI PARMA' and 'PARMA HAM' in several countries. In 1996
Parma ham was registered as a PDO.
6.226
The Respondent registered the domain name <parma-schinken.com> on 7
February 2001. 'Schinken' is the German word for ham. The domain name was
used on a website on which the Respondent offered various meat products
including products advertised as Parma ham.
6.227
Among the arguments of the Complainant were that the domain name was
confusingly similar to its registered certification marks because 'Schinken'
translates into 'prosciutto' in Italian and 'ham' in English; that the Respondent
was aware of the Complainant's rights, and therefore acted in bad faith, because
it placed on its website a reference to the PDO status of Parma ham; and that
the Respondent advertised as 'Parmaschinken' certain ham products, which did
not appear to originate from producers allowed to sell original Parma Ham.
6.228
i. Domain Name identical or confusingly similar
The Panel noted that the European PDO status of Parma Ham was irrelevant
because it was outside the UDRP, however the Complainant's certification
marks brought it within the policy and because 'Schinken' was the literal
German translation of the generic words 'prosciutto' and 'ham', the Panel found
that the domain name was confusingly similar to the Complainant's certifi-
cation marks.
6.229
ii. Rights and legitimate interest
The Panel pointed out that in determining whether a reseller or service agent of
trade-marked goods can use the trade mark at issue in its domain names,
previous decisions have held that a respondent must at the minimum: (i)
actually be offering the goods or services at issue; (ii) use the site to sell only the
trade-marked goods; (iii) accurately disclose the registrant's relationship with
the trade mark owner; and (iv) not try to corner the market in all domain
names.
227
In this case the Panel considered that the Respondent's use of the
reference to 'Parma Ham' was not in good faith. It distinguished the decision
Consorzio del Prosciutto di Parma v Domain Name Clearing Company, LLC
228
6.230
226
Case No D2003-0474.
227
Oki Data Americas, Inc. v ASD, Inc.
, WIPO Case No D2001-0903.
228
WIPO Case No D2000-0629.
