First UDRP Win for .CO Owner | DomainInvesting.com

First UDRP Win for .CO Owner

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A UDRP was filed for Champagne.CO by Comité Interprofessionnel du vin de Champagne of Épernay, France, and the complaint was denied by the sole panelist. I believe this marks the first successful defense of a .CO domain name in a UDRP. Not only is champagne the popular sparkling wine, but it’s also a  region in France where the grapes for said wine are grown.

One reason the respondent one appears to be because the name is geographical in nature. The panelist referred to the WIPO Final Report on the First Domain Name Process and the Second Domain Name Process to determine that “geographical indications, as such, remain outside the scope of the Policy.” Personally, I feel even more comfortable now with my Bahamas.CO website.

The panelist further discusses champagne, the drink, vs. Champagne the region:

In this case, the Panel is not satisfied that the Complainant has shown that its rights in the expression “Champagne” constitute an unregistered trademark right of the kind that would satisfy paragraph 4(a)(i) of the Policy. First, the Panel notes that it is generally accepted that, to be a trademark, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings. It seems to this Panel that a geographical indication per se does not distinguish the wine of one champagne producer from the wine of another, and so does not fulfill the fundamental function of a trademark of distinguishing the goods or services of one undertaking from those of other undertakings. A geographical indication is essentially designed to achieve a somewhat different purpose, namely to protect the producers of a particular region from loss caused by traders wrongfully applying that identifier to goods which have not been produced in the particular region, thereby appropriating to themselves the goodwill arising out of the reputation for quality which the producers of the protected products have built up. It seems to this Panel that geographical indications speak fundamentally of the quality and reputation of the goods produced according to certain standards in a specific geographic area, but not of any particular or individual trade source as such.”

Although it was unnecessary at the end, the panelist did discuss whether the respondent had registered the domain name in bad faith and/or had used it in bad faith:

“However the Complainant has not alleged that the Respondent’s intention was to sell, rent, or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant – just that the Respondent’s primary intention was to rent, sell, or otherwise transfer the Domain Name to a third party. And even if the Complainant had said that the Respondent’s intention was to sell, rent, or otherwise transfer the Domain Name to the Complainant at a profit, the Panel has found that the Complainant is not in fact “the owner of the trademark or service mark”, as those words are used in paragraph 4(b)(i). The Complainant’s allegations therefore do not bring it within paragraph 4(b)(i) of the Policy, and the Complainant has not specified any other ground on which the Complainant is said to have been guilty of bad faith registration and use of the Domain Name. Trading in domain names is not per se contrary to the Policy (see, for example, Media General Communications Inc., cited by the Respondent).”

This is a very in-depth decision, and I recommend that you check it out when you have a chance since I have not adequately analyzed the decision in this post.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


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Comments (9)

    Joe

    Interesting news indeed for .CO

    June 23rd, 2011 at 12:07 pm

    Datura

    I’m not understanding why this was even reviewed in the fist place. champagne is about as generic as it gets, regardless if it’s the geographical location or the beverage. It’s as if the complainant was sipping a little champagne when they decided to file this.

    June 23rd, 2011 at 2:36 pm

    Elliot Silver

    @ Datura

    I agree, but it seems the people at Champagne.com didn’t think so. They felt they had a right to the name, and they lost.

    June 23rd, 2011 at 4:30 pm

    domain report

    It’s good for .CO that people are even filing UDRP’s for .co’s, shows that some are worth ‘fighting’ for.

    June 23rd, 2011 at 6:18 pm

    Brad Mugford

    “It’s good for .CO that people are even filing UDRP’s for .co’s, shows that some are worth ‘fighting’ for.”

    Interesting logic.

    To many .COM owners, .CO is perceived as a squatter extension.

    It many cases .CO can start out as “confusingly similar” because of that.

    There are naturally going to be more disputes because of that than other secondary extensions.

    This however was a ridiculous dispute. There are multiple obvious generic uses for the term “Champagne”.

    Brad

    June 23rd, 2011 at 8:02 pm

    Steven Vickers

    Elliot. Thanks for covering the story about my domain champagne.co
    My representation Adlex has done an amazing job in defending the compaint against me and even picked up the fact that CIVC had amended the policy to suit them by changing
    “… for the purpose of selling … to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant [emphasis added] for valuable consideration …”

    to

    “… for the purpose of selling … to a third party [emphasis added] for valuable consideration …”

    I pleases me to see comments that agree with me on the genetic use of the word champagne.
    Thanks for the positive feedback!

    June 24th, 2011 at 7:17 am

    Unknowndomainer

    The ruling is primarily based on the lack of trademark ownership. The value of the domain is still diminished.

    It will be very difficult to use this site effectively anywhere in the EU. So it’s a GEO domain where the primary focus is on a product you won’t be able to profit from.

    This “group” is the number one customer of the name, imho. If they are smart they’ll just let you do nothing with it. Any future buyer would have to be very wary of its use in a European community.

    Nice victory none the less.

    June 30th, 2011 at 11:02 am

    Elliot Silver

    @ Unknown

    IMO, it would be tough to sell wine/alcohol anyway. If I owned it, I would use it as a travel site, possibly with affiliate booking links (WC Travel or Ian for example). Champagne is a beautiful region and has some awesome restaurants and great scenery. We spent some time in Reims last June and of course visited some of the famed champagne makers.

    June 30th, 2011 at 11:06 am

    Unknowndomainer

    @Elliot

    I agree. It’s similar to Armagnac only Champagne is far more aggressive about protection. I probably underestimate its GEO value but in part because I’d be a little wary of this ruling’s existence.

    If the site was done well and professionally with a group that has an interest in the area then it is all moot. That fact limits the potential field of buyers because a lot of Geo domains are, let’s face it, looking for that (I loathe to use the term) Geo-in-a-Box.

    It’s a great name precisely because the region has such fame and reputation – unfortunately, that’s something the region aggressively protects. The French can be particularly stubborn in matters of wine and regionality much like the Germans with beer and the British with their real ales.

    June 30th, 2011 at 11:47 am

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