Trademark versus geographic term – Gorgonzola UDRP cases
Under the UDRP, a geographical indication (GI) is generally not protected unless a complainant can prove that it also functions as a trademark or service mark. If a GI is protected by trademark law, it may fall within the remit of the UDRP.
The Consorzio per la Tutela del Formaggio Gorgonzola, owners of the figurative mark GORGONZOLA, has filed several UDRPs over the years. In two recent cases, which date from the end of May 2021, the Gorgonzola brand had seen one of its cases refused while the other resulted in the transfer of the domain name in question.
Although Gorgonzola is a protected GI in the European Union, for the purposes of the UDRP, a complaining party need only rely on registered or unregistered trademark rights to prove that it has standing to file a dispute of domain.
Guideline 1.6 of the WIPO Overview of Opinions of WIPO Expert Groups on Selected UDRP Issues addresses issues related to geographic terms. Most geographic terms must be registered as trademarks to fill the first UDRP element. In exceptional circumstances, panels may find that geographic terms not registered as trademarks may nevertheless be sufficient to assert rights. In such cases, the complainant must prove that the mark has acquired secondary meaning. This, however, is very difficult in practice under the UDRP.
In the Gorgonzola cases, the complainant relied on a figurative mark, which mainly includes the term Gorgonzola. Since the first element of the UDRP is a low-threshold test, the panels have found in all previous cases that the owner of the Gorgonzola brand has sufficient standing to file a UDRP dossier.
Although most complainants will overcome the first element if they own a trademark that is also a geographic term, proving the second and third elements of the policy can be difficult.
Respondents know that when dealing with geographic terms, they can successfully justify a legitimate interest if they can prove that they have registered and are using the term for its meaning as a city or place. Most of those interviewed in the Gorgonzola cases relied on this argument. This ultimately resulted in the complainant losing three of its five panel disputes.
So what can we learn from these two almost identical cases that led to such different results?
Gorgonzola used as a geographic identifier
In WIPO’s first case (D2021-0690) concerning the domain name “gorgonzola.info”, the complainant failed to fulfill the second element (and therefore the third element) of the policy, even with the proof that the defendant had been involved in previous cases of bad faith recordings.
The Respondent has proved that the domain name in question was part of a project to “promote and provide information on Italian cities” via its portal. The Respondent relied on the fact that Gorgonzola is still the name of an Italian town in the Milanese hinterland. In addition, he managed to prove that this domain name was part of a model of good faith conduct – owning around 250 other domain names bearing the names of Italian cities.
In view of the evidence provided by both parties, the panelist agreed that at this stage there was no evidence to demonstrate that the Respondent was using or intended to use the domain name to attract Internet users by exploiting the reputation of the GORGONZOLA brand. However, the panelist issued a clear warning to the respondent that “if that happened, of course, the complainant would be free to file a complaint under policy or in court”.
The final comment raises questions as to whether the panelist was convinced that the respondent’s real intention was to use the domain name for its geographic significance. But without proof to the contrary, he ruled in favor of the respondent.
Gorgonzola used to harness its brand value
In the second PMOI case (D2021-0722) rendered only 10 days after the first, the trademark owner, this time, won the case, and the panelist ordered the transfer of the domain name “gorgonzola. blue ”to the complainant.
The Gorgonzola brand once again relied on its figurative mark to successfully overcome the first element of the UDRP. Under the second item, the panelist agreed that the Respondent primarily registered the domain name to commercially benefit the branded customer base by posting Pay Per Click (PPC) links on the website, with related links to the cheese product.
The clear target of the mark and the Respondent’s intention to profit from the confusion of users and gain commercial gain were sufficient for the panelist to conclude that he did not have a legitimate interest in the name of domain and that he used the domain name in bad faith.
The above cases show how careful brand owners, who rely on brands that are also geographic identifiers, need to be going through the UDRP. Unless a defendant clearly targets the trademark owner and exploits their reputation for commercial gain, the complaining party can easily fail under the second and third element of the policy if there is any doubt. in the mind of the panel that the respondent can use it for its geographic significance.
In addition, the Gorgonzola brand also lost two cases in 2017 for similar reasons. Both respondents in these cases were based in the United States, where cheese is not protected as a GI.
The panel in one case (D2017-0554) stated that there was no evidence that the word gorgonzola was anything other than a descriptive term for a type of cheese produced in the United States, where the ‘respondent.
The jurisdiction of a defendant can therefore be prejudicial in cases involving a geographic mark. Even under the UDRP, these rights remain territorial and therefore do not enjoy the same protection worldwide.