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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comitй Interprofessionel du Vin de Champagne (CIVC) v. Richard Doyle
Case No. DIE2007-0005
1. The Parties
The Complainant is Comitй interprofessionel du Vin de Champagne (CIVC), of Epernay, France, internally represented.
The Respondent is Richard Doyle, of Celbridge, County Kildare, Ireland.
2. The Domain Name and Registrar
The disputed domain name <champagne.ie> is registered with IE Domain Registry Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on October 10, 2007 and in hardcopy on October 17, 2007.
On October 12, 2007, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue.
On October 12, 2007, IE Domain Registry Limited transmitted by email to the Center its verification response confirming inter alia that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).
On October 23, 2007, in accordance with the IEDR Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2007. The stated due date for Response was November 12, 2007.
The Respondent submitted Response on November 12, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on November 21, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the IEDR Rules.
On December 8, 2007, the Panel made a Procedural Order pursuant to paragraph 11 of the IEDR Rules requesting further statements and documents from the Complainant and granting the Respondent liberty to deliver to the Center such further submissions, and provide such further evidence, as the Respondent may wish, but limited strictly in reply to the matters addressed in the Complainant’s further submissions.
On December 18, 2007, the Complainant furnished further submissions and no further submissions were received from the Respondent.
4. Factual Background
The Complainant submits that it is a statutory body established inter alia for the purposes of defending preserving and promoting the interests of all those involved in the production and marketing of wines sold under the appellation of origin Champagne.
All producers of Champagne in the Champagne district of France are required by law to subscribe to the Complainant and the Complainant represents all such producers in this Complaint.
The Respondent is a licenced wholesale wine merchant and has carried on business since February 2003 using the trade name Champers. In the course of his business the Respondent sells champagnes and other wines. The domain name in dispute was registered in September 2004.
The Respondent is the owner of both the domain name in dispute and the domain name <champers.ie> and has established websites at both addresses.
5. Parties’ Contentions
The Complainant submits that Champagne is a geographical indication which is one of the three Protected Identifiers mentioned in the IEDR Policy. The Complainant submits that the name Champagne is a registered appellation of origin and, as such, is an autonomous intellectual property right governed by specific regulations distinct from trademarks law. It is a collective right based on the geographical origin and characteristics of the goods and cannot therefore be the property of a sole economic operator.
The Complainant contends that legal protection was first given to Champagne as a designation of origin in the mid-nineteenth century when French courts prohibited the use of this name to designate wines not produced in the Champagne region of France. A decree issued by the French government on December 17, 1908, subsequently reserved the use of this name to wines entirely produced in a restricted region.
The international regulations essentially comprise the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 1994 administered by the World Trade Organization (WTO), and the Lisbon Arrangement for the Protection of Appellations of Origin and their International Registration of October 13, 1958. Since that time, TRIPS and the Lisbon Agreement, the Council Regulation (EC) No. 1493/1999 of May 17, 1999 and many national regulations and/or case law granted an extensive protection to the designation of origin Champagne.
The designation enjoys an exceptional goodwill, prestige and repute in Ireland and throughout the world. There was an increase of 24% in the volume of export shipments of Champagne to Ireland since 2000. It conveys quality which substantially values the wines that are entitled to use this designation.
In addition to the advertising campaigns of its individual producer members, the Complainant acting through various promotional bodies established in various countries in Europe and throughout the world has expended large sums to promote and enhance the reputation and the protection of the name Champange.
On September 7, 2001, in a case brought by the Complainant against Rockynet Com Inc. the Paris District Court ruled that “the domain name and the web address [www.chmp-pagne.com] and the name ‘champ.pagne’ represented an illegal use of the Champagne registered appellation of origin and were evidently of such a nature as to harm and weaken the reputation of this name.”
The Complainant states that it has been successful in cases in respect of the ccTLDs <champagnes.fr>, <champagnes.be> and <champagne.co.uk>.
The Complainant is the owner of the following domain names; <champagne.eu>, <champagne.mobi>, <champagne.biz>, <champagne.com>, <champagne.net>, <champagne.fr>, <champagne.co.uk>, <champagne.es>, <champagne.be>, <champagne.de>, <champagne.nl>, <champagne.us>, <champagne.pt>, <champagne.it>, <champagne.lu>, <champagne.gr>, <champagne.jp>, <champagne.hk>, <champagne.sg>, <champagne.cn>.
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name. When the word “champagne” is used in trade in Ireland it has at all times denoted exclusively wine coming from the Champagne District of France. The Complainant and its trader members have developed a substantial goodwill and reputation in the designation of origin in Ireland.
The Complainant refers to the website established at the <champagne.ie> domain name and states that the Respondent is making an illegitimate commercial use of the domain name when offering and promoting “professional solution for party planning”. On the website the Respondent allegedly offers services catering for “intimate dinner parties to corporate functions. Using our experience and team of experts we will look after the catering, party hire, marquees, champagne, wines and any other needs you might have to guarantee your event is a success for all involved.” (Annex 8, the Complaint) Using the word “champagne” to promote these services is an unjustified misappropriation of a goodwill and reputation in which the Respondent has no legitimate rights.
The Complainant contends that the domain name is used in a way that is likely to dilute the reputation which is essentially attributable to the product itself, to its geographical origin, and to the name Champagne as a Protected Identifier in which the Complainant has rights.
Addressing the issue of whether the domain name was registered or is being used in bad faith, the Complainant submits that the Respondent has no rights to the word “champagne” nor does he have any direct interest in the trade in Champagne.
The activities offered by the Respondent on his website provide evidence of the Respondent’s bad faith use of the domain name. He is clearly seeking to trade on and benefit from the goodwill belonging to the producers of Champagne and divert the goodwill to his own use and profit for his party planning/catering business.
The interested public accesses the “www.champagne.ie” web site in the expectation that the site will exclusively relate to Champagne wines and provide information about Champagne wines. In the Respondent’s hands, the web site offers and promotes a “professional solution for party planning” as well as “a wide range of wines from around the world”. This is certainly not what the users would expect when typing in and searching against the word “champagne” on the Internet.
The Respondent has misappropriated the appellation of origin as his domain name and has used it illegitimately to attract users to his website by creating confusion with a Protected Identifier in which the Complainant has rights. The visitor is lured into the Respondent’s web site by a false promise by the use of the name Champagne.
Finally in correspondence the Respondent has demonstrated that he registered the domain name for the purpose of selling it for valuable consideration. On December 2, 2006, the Respondent made the first contact with the Complainant in order to make a commercial offer to sell the domain name. Since then, the Complainant has simply and repeatedly offered to reimburse all the Respondent’s costs and expenses directly related to the registration and renewal of the domain name in return for the transfer thereof. On April 2, 2007, the Respondent offered the domain name to the Complainant for €19,000.00, 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 Respondent subsequently halved his asking price after the Complainant refused to pay the sum first demanded, demonstrating that he clearly intended to make profit from the domain name in some other way. The Complainant submits that “he was in for what he could get.”
Further, the Complainant alleges that the Respondent’s actions are not those of a person with a genuine interest in the maintenance and development of a Champagne website. He not only demanded an excessive price for the transfer, but also threatened to sell the domain name to a competitor, all in pursuit of maximising his financial gain. The Complainant further alleges that a person with a genuine interest in protection of the name would agree to sell it for a proper price to its rightful owner.
In response to the Procedural Order issued by the Panel on December 8, 2007, in which the Panel requested additional statements and documents from the Complainant, the Complainant submitted that the word “champagne” is a Protected Identifier as defined in Paragraph 1.3 of the IEDR Policy, “the Protected Identifiers for the purpose of this Policy are (…) geographical indications that can prima facie be protected on the island of Ireland”. As stated, “Geographical indications are (…) indications which identify a good as originating in a territory or a region or locality in that territory, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographical origin.”
The Complainant contends that “Champagne” is a registered appellation of origin. The “Champagne” registered appellation of origin is a geographical indication and benefits from widespread protection within France, the European Union and the majority of other countries.
Having been legally recognised, the “Champagne” registered appellation of origin is protected in two ways: as a specific high quality product with its own characteristics, on the one hand, and as a product with an outstanding reputation, on the other.
Legal recognition of the “Champagne” registered appellation of origin has been granted by the Council Regulation (EC) No. 1493/1999 of May 17, 1999 on the common organisation of the market in wine gives protection to geographical indications.
Title V, Chapter II, Art. 50 states that for the purpose of the Article geographical indications means “indications which identify a product as originating in the territory of a third country which is a member of the WTO or in a region or locality within that territory, in cases where a certain quality, reputation or other given characteristics of the product may be attributed to that geographical place of origin.”
“Champagne” has been established as an appellation of origin – i.e. a geographical indication – with Art. 17 of the law of May 6, 1919, with reference to the decree of December 17, 1908, related to the protection of appellations of origin. This law was added to by the law of July 22, 1927, and the decree law of September 28, 1935.
Following the creation of the Institut national de l’origine et de la qualitй (INAO) (National Institute of Origin and Quality) in 1935, the decree of June 29, 1936 definitively fixed the legal framework for the “Champagne” registered appellation of origin as it applies today. This decree includes, in addition to a definition of the production area, a certain number of essential production conditions for acquiring a right to the “Champagne” registered geographical indication in particular, growing methods, a limitation on yield, œnological practices and various other extremely strict quality rules.
The Complainant submits that the “Champagne” name is a Protected Identifier that may only be used to refer to wines actually benefiting from the Champagne registered geographical indication.
While Champagne has several aspects in common with other sparkling wines namely an alcohol content of close to 12%, low acidity (4 to 10 g/l), pressure of above 3.5 bars, it has its own characteristics, in particular those relating to the soil, which makes it a unique wine. These are natural factors being, the characteristics of the geographic area such as the climate, the subsoil, the hillside vineyards and the grape varieties grown. The human factors are the methodology of management of the vines, picking and pressing the grapes. Production factors are the method of liqueur blending, second fermentation in the bottle, riddling (turning the bottles in order to progressively make all of the sediment fall to the neck of the bottle) and disgorging (extracting the sediment coated cork) and dosing (the addition, after disgorgement, of a liqueur made of sugar and Champagne wine).
The “Champagne” name was one of the very first appellations of origin to be recognised by legislators and is one of the oldest and most famous in the world.
The Complainant further submits that the history of Champagne clearly illustrates the development of its reputation over the centuries. In his reference work entitled “Le Livre d’or du Champagne”, Franзois Bonal examines the early trade in Champagne wines, which can be traced back to the 17th century, and their reputation which spread worldwide in the 18th century, with the mastery of carbonisation.
The first Champagne houses were founded in the 18th century and promoted trade in Champagne wines which have been exported across the world since then. A work published in 1882 with the title “A history of Champagne” highlights the favour that Champagne was finding with kings, emperors, princes and many other historic personalities, and demonstrates the reputation of Champagne that had already begun to grow at this time.
French language dictionaries as early as the 19th century already included the term “champagne”.
The Complainant contends that the unparalleled reputation of Champagne has been growing ever since, requiring increased protection for the “Champagne” name. From the middle of the 19th century onwards, the courts began to protect the “Champagne” name by prohibiting its use for wines not produced in the Champagne region including Saumur wines, for example. In 1843, the Regional Court in Tours found against producers in the Loire Valley who were using the “Champagne” name to market their sparkling wines. A similar decision from the Court of Appeal in Angers, in 1887, set an early precedent for the “Champagne” name: “No one may understand by Champagne or Champagne wine anything other than a wine both harvested and produced in Champagne, a former, geographically determined province of France”.
This decision was confirmed by a ruling from the Supreme Court of Appeal in 1889.
As a result, the decree of December 17, 1908, stipulated that the “Champagne” name was exclusively reserved for wines grown and produced completely in a clearly defined region comprising, specifically, various districts of the departments of the Marne and the Aisne.
From that time onwards, jurisprudence has had the opportunity to uphold the reputation of the “Champagne” appellation of origin and its essential protection against all types of infringements on numerous occasions.
In its ruling of March 5, 1984, on the matter of a cigarette that had been called “Champagne”, the Paris District Court considered that(1): “ … This appellation has, for several centuries, acquired an unmistakable reputation and glamour conferring on it a special type of recognition that is uniquely defined by the nature of the products it refers to. In effect, the “Champagne” name is wreathed in universal prestige, which clearly exceeds that generally conferred on products that benefit from a registered appellation of origin. Its reputation is extremely long-standing: around the world this word has come to symbolise special recognition and outstanding prestige which is associated everywhere not only with the region, but with the whole country where the wine it refers to is made…”
Equally, in a ruling of December 15, 1993, relating to a perfume that had been called “Champagne”, the Paris Court of Appeal stated that: “…By adopting the name Champagne for the launch of a new luxury perfume, by choosing packaging that resembles the characteristic corks used in bottles of this type of wine and by using the copy lines, the image and the taste sensations of joy and celebration that it evokes, the appellants have aimed to create an attractive effect borrowed from the prestige of the name in question. For this sole reason, they have, by means of a process of parasitic actions, harmed the reputation that only Champagne producers and merchants may make use of to market the wine bearing this name.”
Equally, the Complainant contends that in a ruling of December 1960 relating to a sparkling wine called Spanish Champagne and sold in United Kingdom, the Chancery Division stated that: “…The suggestion is of course, that in the present case the Spanish wine is so like Champagne that it is not improper to call it Champagne with the adjective Spanish. But for the purpose of the question which I have to decide which is whether the name is calculated to deceive and which is concerned with unfair trading, it seems to me that close resemblance makes the counterfeit not less but more calculated to deceive, and so the argument fails.… I am compelled to reach the conclusion that this is not an innocent case of passing off. I think that Mr. Grylls and his company intended by using the name Spanish Champagne to attract the goodwill connected with the reputation of Champagne to the Spanish product. I think that it was deliberate, this is dishonest trading”.
Today, the Complainant submits that there is no country (with a few very rare exceptions) in which Champagnes are not sold, and, in any event, there is no country in which “Champagne” does not convey an image of luxury and celebration nor one in which Champagne is not mentioned in one way or another in the press or in its literature.
The consequence of this reputation is the unparalleled attraction that this name has for impersonators. The Complainant is therefore obliged to defend the “Champagne” registered appellation of origin against a multitude of improper uses referring to all types of products or services, in numerous countries, including for example:
- perfumes in France (see Paris Court of Appeal, December 15, 1993, Parfums Yves Saint-Laurent, see above);
- bubble baths in Switzerland (see Court of Justice of Geneva, March 30, 1990);
- advertising for computer equipment in Germany (see Federal Court of Justice, 17th January 2002); and
- soft drinks in United Kingdom (see Court of Appeal, June 25, 1993, Elderflower Champagne which has stated the following :”It seems to me inevitable that if the defendants, with their not significant trade as a supplier of drinks to Sainsbury and other retail outlets, are permitted to use the name Elderflower Champagne, the goodwill in the distinctive name champagne will be eroded with serious adverse consequences for the champagne houses....but it is unnecessary to say more about that as in view of the conclusion that I have reached on passing off, it is clear that a more than minimal risk of confusion is produced by the use of the name Elderflower Champagne for the defendant’s product. Accordingly, Article 15(5) is contravened and prima facie an injunction to prevent such contravention is the appropriate remedy for the plaintiffs.”)
The Complainant contends that jurisprudence relating to trademarks can most certainly be transposed to domain names which also represent an individual appropriation of a name for the area of the Internet.
On September 7, 2001, in a case brought by the Complainant against the companies Rockynet Com Inc. and Saber Entreprises Inc., the Paris District Court ruled that “the domain name and the web address [www.champ-pagne.com] and the name “champ.pagne” represented an illegal use of the Champagne registered appellation of origin and were evidently of such a nature as to harm and weaken the reputation of this name”.
On August 17, 2007, the Appeal Panel of the Nominet UK Dispute Resolution Service ruled that “the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name”
The Procedural Order also requested submissions from the Complainant as to the basis on which the Complainant claims to have rights by registration or at common law in the word “champagne” as a Protected Identifier as defined in the IEDR Policy.
In this regard the Complainant submitted that according to Paragraph 1.3.3 of the IEDR Policy, “… A Complainant is deemed to have rights in a geographical indication for the purpose of this Policy, if it has standing to base an action on the alleged infringement of the geographical indication before the Court of Ireland”.
The Complainant is entrusted by law with defending the collective interests of growers and Champagne houses. This is a public service mission with the prerogatives of public authority, whose objectives are to manage, promote and protect the “Champagne” registered appellation of origin. It compulsorily brings together all the growers and Champagne houses.
The organisation of the Complainant is based on a system of equal representation for the growers and the Champagne houses. The decision making bodies therefore comprise an equal number of representatives of the two professional sectors, including its presidency which is held jointly by the President of the Champagne Houses and the President of the Champagne growers.
The duty of the Complainant, defined in Art. 8 of the law of April 12, 1941 modified by law No. 2005-157 of February 23, 2005 Art. 234 VIII (JORF February 24, 2005) relates to one of the missions of the Complainant which “is to implement the following general measures, in accordance with Government directives: 8 - to undertake information, communication, development, protection and defence campaigns in favour of the pre-determined Champagne registered appellations of origin.”
In order to perform its duties, the Complainant has, it says, on the one hand, administrative powers, which enable it to make decisions that are imposed on those under its jurisdiction and to take sanctions against any member of the profession, in the event that a decision is violated, and, on the other hand, the power to collect mandatory financial contributions from members of the profession to finance its activities.
The Complainant submits that it has a legal personality and the right to pursue matters in court, in particular against those who are responsible for actions that directly or indirectly harm the collective interests of the constituent groups (the growers and Champagne houses) that it represents, pursuant to the terms of Art.13 of the law of April 12, 1941.
The first of these collective interests is stated to be defense of the “Champagne” registered appellation of origin, which identifies the wines produced, developed and marketed by the members of the constituent groups represented by the Complainant.
The Complainant submits that the power of the Complainant to pursue matters in court, in order to defend the “Champagne” registered appellation of origin, has been recognised by numerous rulings and orders and ultimately by an order from the Commercial Chamber of the Supreme Court of Appeal issued on February 18, 2004. The Complainant takes action, within the framework of this mission, both in France and abroad.
The Complainant submits that it is therefore unquestionable that, pursuant to Art. 13 of the law of April 12, 1941, the Complainant has an interest in taking action and is proved to be perfectly within its rights to institute legal proceedings.
The Complainant reiterated that it has rights pursuant to the provisions of the Council Regulation (EC) No. 1493/1999 relied upon in the Complainant submits that it is a sectoral organisation as stated in the Council Regulation (EC) No. 1493/1999 of May 17, 1999 on the common organisation of the market in wine.
It is clearly stipulated in this Regulation under Title II, Chapter II, Art. 41-4 (viii), that the Complainant has rights to carry out some measures, among which, exploiting the potential of and protecting organic farming as well as designations of origin, quality labels and geographical indications.
Champagne is one of the quality wines produced in specified regions – as referred in the same Regulation under Title VII Art 54 of the Regulation and in the list of quality wines produced in specified regions (published on May 10, 2007, pursuant to Art. 54 (4) of the Council Regulation (EC) No. 1493/1999).
The Procedural Order also requested the Complainant to address the question as to whether, if it were to be successful in this Complaint, the Complainant would qualify pursuant to the IEDR Policy to be entitled to the relief sought (viz. transfer as distinct from cancellation of the domain name at issue) and thereby entitled to hold a .ie domain name and the application of paragraph 5.2 of the IEDR Policy to the relief sought by the Complainant in these proceedings.
The Complainant has submitted that in order to perform its legal and statutory institutional attributions, the Complainant has been registering numerous Internet domain names and currently owns the main ccTLDs associated to “Champagne”; <champagne.fr>, <champagne.co.uk>, <champagne.es>, <champagne.be>, <champagne.de>, <champagne.nl>, <champagne.us>, <champagne.pt>, <champagne.it>, <champagne.lu>, <champagne.gr>, <champagne.jp>, <champagne.tw>, <champagne.hk>, <champagne.sg>, <champagne.cn>. The websites at these domain names are dedicated exclusively to generic communication on Champagne wines.
The Complainant has 13 bureaux in the main markets, including United Kingdom and Ireland. These Champagne bureaux are commissioned by the Complainant to increase market awareness of Champagne, enhance and strengthen the image and market position of Champagne and restrict use of the name “Champagne” to wines produced exclusively within the area of Champagne appellation.
For each of these countries, the Complainant says it has created a specific official website with local ccTLD.
In these websites, it submits, there is absolutely no link nor reference to any private trademarks owned by each producers (Houses of Champagne or growers)- not to mention that there is no business section in these websites, but only general information on Champagne wines, as a “mere” geographical indication.
Finally, the Complainant contends, if the domain name <champagne.ie> were to be transferred to the Complainant, it would be directly used to connect Irish visitors to the official United Kingdom website dedicated to Champagne wines and personalized according to the specificity of this market.
The Respondent contends that he is is a fully licensed champagne and wine distributor and importer and has been since 2003. He submits that he registered the domain name <champagne.ie> to support and promote his established champagne business. He has invested heavily in champagne and the promotion thereof. He has never before sold a domain name. He owns only two domain names: <champagne.ie> and <champers.ie> both of which he uses to promote and sell champagne. He submits that he registered the name for bona fide reasons and in good faith.
The Respondent submits that CHAMPAGNE is not a registered trade mark in Ireland, and as such enjoys no statutory protection under Irish law.
The Respondent denies that the Complainant has rights in Champagne except within its role as a body set up to defend the interests of the Champagne producers it represents. When the Complainant acts outside those reasons for which it was set up, it cannot be said to have rights in Champagne.
The Respondent absolutely rejects the notion that the Complainant, in attempting to deprive an established licensed Irish champagne agent of one of the Complainant’s assets, is performing “its legal and statutory attributions.” In taking this action the Complainant is depriving the Respondent of time that ought to be spent engaged in selling its members’ wines, the Complainant is not acting in the best interest of Champagne producers and as such is acting ultra vires its own constitution.
The increase in the sales of Champagne in Ireland since 2000, cited by the Complainant is due primarily to the work put in by Irish champagne importers and distributors, such as the Respondent.
The Respondent contends that the success of Champagne’s success around the world is due in large part to the work of the Champagne houses’ agents in each country. Similarly, the goodwill which is enjoyed around the world by champagne would not be so prevalent were it not for dedicated champagne importers and distributors such as the Respondent who invest large amounts of money in stock and advertising and who invest their time in selling and promoting champagne. It is therefore vital that such agents’ interests in Champagne are to be protected.
The Respondent refers to the three cases cited by the Complainant in relation to the domain names <champagnes.fr>, <champagnes.be>, and <champagne.co.uk> in which it has won favourable rulings and submits that these cases bear absolutely no resemblance to the current case.
The Respondent in the first above mentioned case (Comitй Interprofessionnel du Vin de Champagne (CIVC) contre Internet SARL,
WIPO Case No. DFR 2005-0006) never had a champagne business. They had no content on their website. The Respondent in the second case never had a champagne business - they appear to have had a postcard business. The Respondent in the third case never had a champagne business, but owned over 1,000 domain names.
The Respondent submits that he carries on a legitimate champagne importation and wine distribution business. The Respondent established the business in February 2003 using the business name Champers. This name reflects the Respondent’s focus on champagnes above all other wines. The Respondent holds a full Irish Excise License to sell wines/sparkling wines and has done since May 2003. The Respondent has imported and sold and marketed a range of champagnes since 2003. The Respondent has sold and promoted champagnes from eight different champagne houses and plans to increase this in January 2008. The Respondent estimates that he has sold in the region of 12,000 bottles of champagne since setting up business in 2003.
The Respondent is a registered non-proprietal warehouse keeper based in Staffords, Drinagh Co. Wexford. The status of non-proprietal warehouse keeper is not afforded to a trader unless they can prove to the satisfaction of the Irish Revenue Commissioners that they import sufficiently large quantities of stock. The Respondent imports champagne only and by extension therefore, this shows the Respondent imports substantial quantities of champagne into Ireland (emphasis supplied).
The Respondent contends that he supplies champagne both to the public and to trade clients through importation and reselling including the reselling champagnes and wines imported by other Irish wine importers. The Respondent is proud to supply some of Ireland’s most famous restaurants with champagne only (emphasis supplied).
Over the last 4 years, the Respondent has entered a large number of champagnes from four separate champagne houses, in the wind guide, A&A Farmar’s Best of Wine in Ireland (the definitive Irish Wine Guide). The Respondent states that it will also be seen from the Respondent’s entries in this guide that he has only included champagnes and has never entered any of its wines. This again demonstrates the emphasis placed by the Respondent on promoting and selling champagnes above all other champagne wines.
The Respondent says he owns one other website established at the <champers.ie> domain name. On this website he offers for sale champagnes only using an online ordering and payment system which the Respondent has had installed, the Respondent plans to include all the other champagnes which the Respondent currently sells.
The Respondent says he is moving away from the party planning and catering sector and plans to combine his websites for the online sale of a large range of champagnes in early 2008.
The Respondent submits that he purchased the domain name <champagne.ie> in September 2004, originally as an additional address for his existing champagne business.
During 2005, the Respondent began offering ancillary party planning services through contacts built up by supplying champagnes and wines to parties. The Respondent therefore began promoting these ancillary services on the website.
The Respondent states that he paid over €3,000 in graphic design fees, website hosting fees, directory advertising €1,243.88. He has used the goodwill that he has built up as a champagne trader to promote the website by word of mouth. It follows that prior to receiving notice of this dispute in 2007, the Respondent used the domain name in connection with the bona fide offering of goods and services, in this case champagne, wines and ancillary party planning services.
The Respondent contends that by using his website to sells champagne and promote the sales of a business which specialises in the sale of champagnes above all other wines the Respondent can not be said to “dilute the reputation of champagne”.
The growth of champagne around the world depends on importers and distributors around the world investing their capital in champagne stock and investing their time and money in selling champagne. Those who validly represent a number of champagne houses in Ireland as agents must also by extension enjoy rights in Champagne. By his own hard work in cold calling to restaurants and wine shops and by investing money in his promotional campaigns the Respondent has built up a solid client base.
Therefore, the Respondent, in his capacity as a legitimate, licensed champagne importer with a business established over four years, must be considered as having a legitimate interest in Champagne.
Addressing the Complainant’s allegation that the domain name has been registered or is being used in bad faith, the Respondent submits that he is the holder of a valid excise license and is a non-proprietal warehouse keeper. He has sold and promoted champagne since 2003 and it follows that he has a direct interest in the trade of champagne.
The Respondent denies the Complainant’s claim that the Respondent has used the domain name to “lure” customers onto his website with the “false promise” of finding champagnes, and that if a user were to type in and search “champagne” on the Internet, a website selling champagnes and wines is “certainly not what users would expect”. The Respondent submits that this is a completely inaccurate statement. A simple search for the word “champagne” on <google.co.uk> shows clearly that of nine first page results (excluding Wikipedia), five results relate to online offerings of both wines and champagnes. In other words, 55% relate to offerings which the Respondent claims users “would not expect”. Similarly of eight sponsored links on <google.co.uk>, under a search of the word “champagne”, eight relate to online offerings of wines and champagnes. In other words, 100% of sponsored links relate to offerings which, according to the Complainant, users “would not expect”. This clearly demonstrates that users enter the word “champagne” on search engines in the reasonable expectation of finding a website offering champagnes and wines for sale.
The Respondent contends that the Complainant’s assertion that the user would type in <champagne.ie> in the expectation of finding an information site relating to champagnes does not hold water. This may be true for global level domains such as .com, .net, .biz etc., but surely when one types <champagne.ie> into the Internet it is because they are an Irish consumer who wishes to purchase champagne from an Irish champagne agent and not merely find out information.
The Respondent purchased the domain name in September 2004. It should be obvious that as an established and licensed champagne importer and distributor since 2003, the Respondent registered the domain name in good faith to support his existing business of selling champagne wines.
While the domain name was purchased initially as an additional address for the Respondent’s existing online offering, the Respondent however subsequently began offering ancillary activities of party planning. The Respondent therefore decided to include said ancillary and complimentary services on the website. These ancillary party planning and promotional activities were not a commercial success. The Respondent therefore decided to gradually withdraw from the party planning business and concentrate on his champagne and wine business.
Due to financial pressure, and in order to recoup the financial losses sustained in the party planning business, the Respondent reluctantly decided to sell the domain name in late 2006. The Respondent submits that it should be obvious that the value of the domain name <champagne.ie> is high to the Respondent as a bona fide champagne and wine importer and distributor as it matches the primary product that the Respondent would have been offering. Therefore, in his valuation of the domain name, the Respondent took into account the present value of such lost future earnings as well as graphic design costs circa €3,000, advertising €1,243.88, three years worth of registrations and the goodwill built up by the Respondent through his own marketing of the website.
The Respondent submits that a domain name is not an easy asset to value and as the Respondent has never before sold a domain name, accordingly he found it difficult to place a value on the domain name in dispute. Given the responses to the Respondent’s initial offer, he realised that the value he had placed on the domain name was substantially more than interested parties were willing to pay. A lengthy exchange of emails followed in which the Complainant continued to offer to “reimburse” the Respondent with up to a maximum of €1,000 and consistently threatened the Complainant with legal action. This completely arbitrary figure of €1,000 is one which the Complainant has taken it upon itself to define as “a proper price”.
The Respondent has accordingly had to give up a substantial amount of his time in November, 2006, which is essentially the Respondent’s busiest month for champagne sales. This was a situation which the Respondent would have wished to avoid as it has cost him time and money. It is for this reason that the Respondent sent the final email.
One year on from the Respondent’s initial decision to sell the domain name, the financial issues he faced are no longer the same and consequently the Respondent no longer wishes to sell the domain name.
The Respondent intends to proceed with his original intention to use the domain name to promote the online sale of champagnes with his other website at the “www.champers.ie” address.
6. Discussion and Findings
Paragraph 1 of the IEDR Policy places on the Complainants the obligation to prove that:
1.1.1 the domain name at issue is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Respondents have no rights in law or legitimate interests in respect of the domain name at issue; and
1.1.3 the domain name at issue has been registered or is being used in bad faith.
Paragraph 1.3.1 of the IEDR Policy provides that “Protected Identifiers for the purpose of this Policy are:
1.3.1 trade and service marks protected in the island of Ireland.
1.3.2 personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland.
1.3.3 geographical indications that can prima facie be protected in the island of Ireland. Geographical indications are, for the purposes of this Policy, indications which identify a good as originating in a territory or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. A Complainant is deemed to have rights in a geographical indication for the purposes of this Policy, if it has standing to bring an action based on the alleged infringement of the geographical indication before the courts of Ireland.
A. Identical or Confusingly Similar
Is the word “champagne” a Protected Identifier for the Purposes of the IEDR Policy? Paragraph 1.3 of the IEDR Policy defines Protected Identifiers as including “geographical indications that can prima facie be protected in the island of Ireland. Geographical indications are, for the purposes of this Policy, indications which identify a good as originating in a territory or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”
In the Complaint, and in the response to the Procedural Order, the Complainant’s submissions unfortunately focus on rights in France and other jurisdictions, rather than Ireland. Champagne is undoubtedly a famous designation of origin, but that is not sufficient to satisfy the IEDR Policy. The IEDR Policy requires that a designation of origin must be prima facie protected in either or both of the jurisdictions of Ireland.
The Complainant continuously claims that Champagne is a registered appellation of origin but has not provided any evidence of any registration in either of the jurisdictions in Ireland. In particular there is no evidence that the word “champagne” has been registered as a Certification Trade Mark or a Collective Trade Mark.
The Complainant relies on the Council Regulation (EC) No. 1493/1999 of May 17, 1999 and in particular Articles 41-44, 50 and 54 thereof. It is difficult to understand how any of these provisions create rights for the producers of Champagnes in either jurisdiction in Ireland and despite having been specifically requested so to do, the Complainant has not adequately addressed this issue. The provisions in Articles 41-44 relate to the implementation of marketing rules by producer Member States to give effect to decisions of “sectoral organisations” and œnological production regulations. Article 50 expressly refers to wines from “third countries” as distinct from other member states of the Community. Article 54 sets out rules relating to the production of quality wines in specific regions.
Nonetheless the Complainant has referred to an English authority that accepts that the Complainant has standing to bring an action in passing off. This authority has persuasive standing in an Irish court.
The Panel notes that under the IEDR Policy the Complainant is only required to establish a “prima facie” case that the geographical indication can be protected in Irish law and as the Complainant has made out a prima facie case that the word “champagne” is protectable under the Irish law of passing off, the Complainant has succeeded in establishing that the designation of origin CHAMPAGNE is a Protected Identifier for the purposes of the IEDR Policy.
Does the Complainant have rights in the Protected Identifier for the purposes of the IEDR Policy? Paragraph 1.3.3 of the Policy states that “a Complainant is deemed to have rights in a geographical indication for the purposes of this Policy, if it has standing to bring an action based on the alleged infringement of the geographical indication before the courts of Ireland.”
The Complainant was created in France by the law of April 12, 1941 modified by the laws of June 2, 1944, June 7, 1977, June 23, 2005 and January 5, 2006.
The Complainant is a body entrusted with a public service mission and granted the prerogatives of public authority, whose objectives are to manage, promote and protect the CHAMPAGNE registered appellation of origin. It compulsorily brings together all the growers and Champagne houses.
It would appear to follow that the Complainant has locus standi to protect such rights as may exist in the geographical indication Champagne in the courts of Ireland.
This Panel is satisfied that the domain name in dispute is identical to the Protected Identifier CHAMPAGNE and in the circumstances the Complainant has satisfied the first element of the test in the IEDR Policy.
B. Rights or Legitimate Interests
The majority decision in Motorola, Inc. v. NewGate Internet, Inc.,
WIPO Case No. D2000-0079 the panel stated “the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products.”
The Respondent’s claim relies primarily on the argument that pursuant to paragraph 3.1.1 of the IEDR Policy, “before being put on notice of the complainant’s interests in the domain , it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business.”
The Respondent is licensed to sell wine in the Republic of Ireland and has provided evidence that he is engaged as a reseller of Champagne and other wines and as such the Complainant argues that the Respondent is engaged in a bona fide use of the domain name.
In the context of the UDRP, the principles governing the use of a domain name by a reseller where the respondent claimed that there was an expressly authorised contractual relationship were addressed in Oki Data Americas, Inc. v. ASD, Inc.
WIPO Case No. D2001-0903.
The Oki Data principles have been applied in respect of resellers where no such authorised relationship exists such as the decision of the three member panel in Philip Morris Incorporated v. Alex Tsypkin,
WIPO Case No. D2002-0946, where the panel noted that the registrant was not confining his use of the disputed domain name to the resale of Complainant’s cigarettes by reference to Complainant’s mark. He was trading on the fame of Complainant’s mark to sell, inter alia, the products of Complainant’s competitors. The panel was satisfied the presentation of Respondent’s website was likely to mislead Internet users into believing the site was operated or endorsed by or affiliated with Complainant.
While there has not been absolute unanimity among panelists, the majority view has been described in WIPO Overview of WIPO Panel Views on Selected UDRP Questions (http://www.wipo.int/amc/en/domains/search/overview/) as follows:
“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 Respondent’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
Panels have not been unanimous in the application of this approach to such circumstances.
In Marathon Enterprises, Inc. v. William I Bauer,
WIPO Case No. D2007-1036, the panel adopted the reasoning in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,
WIPO Case No. D2004-0481 stating:
“The panel there concluded that the respondent had a legitimate interest in the disputed <porsche-buy.com> and <porschebuy.com> domain names being used by the respondent to point to websites comprising a market place for used Porsche cars only. Although respondent’s website also linked to websites that offered, under different domain names, competing car brands, this did not, in that panel’s estimation, constitute an offering of goods under the disputed domain such that the respondent’s legitimate interest in the disputed domains was negated. Compare Freni Brembo S.p.A. v. Webs We Weave,
WIPO Case No. D2000-1717, where an authorized distributor of complainant’s trademarked brakes who registered and used a domain name incorporating the trademark to point to a website that marketed primarily complainant’s brakes, and only occasionally products manufactured by complainant’s competitors, was allowed to retain the domain name.”
In General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi
WIPO Case No. D2007-0645, the issue of rights in a domain name that is identical to a trademark, where the registrant has been engaged in non authorised resale arrangements is dealt with as follows:
“The question that therefore arises is whether Respondent has a legitimate interest in using a domain name that is identical to Complainant’s trade marks in circumstances that are very likely to give rise to initial interest confusion, even though it may be selling Complainant’s legitimately trade marked goods at the site and any such confusion is likely to be dispelled once internet users arrive at the site because of its disclaimers? In considering that question, the Panel is mindful that while a person may very well be perfectly entitled (for reasons of fair competition or otherwise) to offer for sale (or re-sale) a trademark owner’s genuine branded goods, that does not necessarily extend to a right to do so through a domain name that is virtually identical to that trademark owner’s mark or marks. It is noteworthy in this respect 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 Respondent has no legitimate interest in this case and the Panel 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 on-line business and does not, on balance, unduly inhibit competition with the trademark owner.
Accordingly, the Panel, on balance, finds that the Complainant has satisfied the second element of Paragraph 4(a) of the Policy in relation to the disputed domain name.”
General Electric was cited more recently in Magma Products Inc. v. Herb Halling,
WIPO Case No. D2007-0995.
In casu, the Respondent has (on the basis of the evidence submitted in the pleadings) not restricted the use of the domain name to the sale of Champagne and has offered other products and services on the website and in particular “professional solution for party planning” as well as “a wide range of wines from around the world”. If this Panel were to take a view that a registrant may offer other products on a website where the domain name address is identical to a complainant’s trademark in limited circumstances, it might be arguable that the use of the domain name in casu as a site offering “professional solution party planning” does not put the Respondent outside the pale. In this case however the Respondent went further and has offered competing wines for sale.
This Panel adopts the tests set out in OKI Data and follows that application of that test in General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi
WIPO Case No. D2007-0645 and finds that such use is fatal to the Respondent’s claim to have a legitimate interest in the domain name. The Complainant has therefore succeeded in the second element of the test also.
C. Registered or Used in Bad Faith
Paragraph 2.1.1 of the IEDR Policy provides that where the domain name has been registered or is used primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of the registrant’s documented expenses which are directly related to the registration of the domain name, such activity may be considered as evidence of registration or use of a domain name in bad faith.
The Respondent offered the domain name in dispute to the Complainant for €19,000.00, 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.” He subsequently reduced the price that he requested.
The Respondent argues that he expended a significant sum of money in designing the website and registration fees. Even accepting the figures put forward by the Respondent the sums that he was asking greatly exceeded his outlays. Furthermore, the greater part of the outlays to which he refers relates to design and business costs and are not directly related to the registration of the domain name.
The Respondent has stated that the domain name in dispute is of great value to a wine merchant. That is without doubt the case, but in the present case the Respondent had no rights or legitimate interests in the domain name.
Even if one were to accept that the Respondent registered the domain name in good faith as he has argued, he subsequently used the domain name primarily for the purposes of selling or transferring the registration to the Complainant and the Complainant has submitted that the Respondent went as far as to threaten to sell the domain name to a competitor of the Complainant.
The use of the domain name as an address of a website on which competing wines and services not associated with the Protected Identifier have been offered amounts to use in bad faith.
The Complainant has therefore also established the third and final element required by paragraph 1.1 of the IEDR Policy and, subject to this Panel’s finding in relation to the remedies requested, is entitled to succeed in its application.
The Complainant requests that the domain name be transferred to the Complainant.
Paragraph 6.1 of the IEDR Policy provides that: “A Panel decision to transfer a domain name registration shall be subject to the prevailing party meeting the registration conditions for .IE at the time of implementation of the decision. If such conditions are not met, the domain name registration subject to the dispute shall be cancelled.”
For all the foregoing reasons, in accordance with paragraphs 1.1 of the IEDR Policy and 14 of the IEDR Rules and subject to paragraph 6.1 of the IEDR Policy, the Panel orders that the domain name <champagne.ie> be transferred to the Complainant.
Dated: February 5, 2008