The Gorgonzola defense organization recently succeeded in a UDRP case concerning the domain name gorgonzola.blue (WIPO, D2021-0722, Consorzio per la Tutela del Formaggio Gorgonzola v. Whois Privacy, Private by Design, LLC / Gerald Baton, May 30, 2021). This transfer decision is almost an event as the organizations for the protection of geographical indications, despite the strong notoriety of many of them, have hard times trying to put an end to cybersquatting cases through extrajudicial means, in particular when the top-level-domain is governed by the Uniform Domain Name Dispute Resolution Policy (UDRP) such as .COM or .CLUB.
The Consorzio per la Tutela del Formaggio Gorgonzola has not always been successful in the extrajudicial proceedings it has carried out. For example, the third-party decision-makers had rejected the request to transfer the domain names gorgonzola.city (WIPO D2017-0253, Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc., April 12, 2017) and gorgonzola .club (WIPO D2017-0554, Consorzio per la Tutela del Formaggio Gorgonzola v. William Wise, May 14, 2017).
The gorgonzola.city case
In the first case, on the day the complaint was submitted, the domain name was used in connection with a website dedicated to the town of Gorgonzola. The peculiarity of this case is the .CITY top-level domain. The three-member panel acknowledges that “it is entirely possible that the choice of an American company to register the Disputed Domain Name <gorgonzola.city> might have been prompted by the famous trademark for cheese” (WIPO D2017-0253, Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc., April 12, 2017). Indeed, as is often the case with geographical indications, the product’s notoriety exceeds that of the territory. Moreover, the panel indicates that Gorgonzola is a small Italian village with no significant tourist attraction. Given the circumstances, what would be the interest, for the defendant, to devote financial and human resources to the tourist development of the small village of Gorgonzola? However, given the .CITY TLD, it was particularly challenging to provide proof of bad faith. From a strategic point of view, it would have been helpful for the municipality of Gorgonzola to register the domain name gorgonzola.city during the .CITY sunrise period.
The gorgonzola.club case
In the second case, concerning the domain name gorgonzola.club, the panelist noted the short life of the domain name (only four months between its registration and the submission of the UDRP complaint), which, moreover, had not yet been used. The denial of the complaint was substantially based on the following statement:
“It is not implausible that a party unaware of the Complainant, or a party aware of the Complainant but cognizant that the protection of the denomination of origin “Gorgonzola” does not extend to the United States, would seek to register a Domain Name consisting of the word “gorgonzola” to take advantage of the descriptive meaning of the word in the United States, namely as a particular type of cheese.” (WIPO D2017-0554, Consorzio per la Tutela del Formaggio Gorgonzola v. William Wise, May 14, 2017).
The demonstration of the defendant’s bad faith indeed requires a subjective analysis aimed at proving that the domain name holder knew or should have known the trademark on the day of registration. In this regard, the existence of a trademark in the country where the defendant has his/her residence or registered office may constitute an indication of bad faith in the context of a UDRP proceeding, which is a-territorial in nature. In this case, by indicating that the defendant can, with all impunity, register a domain name identical to a distinctive sign whose protection “does not extend to the United States” (id.), the panelist had proceeded to a territorialization of the UDRP and, in doing so, had artificially introduced the territoriality principle into the UDRP. Furthermore, it is hard to imagine that the Respondent was unaware of the geographical indication “Gorgonzola” and that this choice was purely due to chance. Let us also recall that Article 2 of the UDRP principles (icann.org) obliges those registering a domain name to carry out a search on prior rights. Finally, it is worth noting that, subsequently, the defendant had no hesitation in assigning gorgonzola.club to the complainant. Heartbreaking? Intellectual honesty calls for questioning the real passion of the defendant: the Italian blue cheese or the financial value of the domain name gorgonzola.club revalued upwards after a UDRP procedure leading to a rejection decision?
The gorgonzola.blue case
“Gorgonzola has been produced for centuries in Gorgonzola, Milan, acquiring its greenish-blue marbling in the 11th century” (Wikipedia.org, English version of June 11, 2021): hence the choice of the domain name gorgonzola.blue. And the defendant, in case D2021-0722, assured that he did not know “Gorgonzola”! It seems that no one knows this cheese, which, paradoxically, does not prevent multiple registrations of domain names reproducing its protected name. The respondent supported his position by referring to the previous cases: “gorgonzola.city” and “gorgonzola.club”. The mischievousness of cybersquatters is noticeable. Fortunately, and legitimately, the panelist ordered the transfer of the domain name to the Consorzio per la Tutela del Formaggio Gorgonzola (WIPO, D2021-0722, Consorzio per la Tutela del Formaggio Gorgonzola v. Whois Privacy, Private by Design, LLC / Gerald Baton, May 30, 2021).
Conclusion
The gorgonzola.city, gorgonzola.club, and gorgonzola.blue cases reveal that cybersquatters are fully conscious of the flaws of the UDRP in the presence of a geographical indication. One must be aware of the path leading to the registration of domain names such as gorgonzola.city, gorgonzola.club or gorgonzola.blue: a mere advertisement or merchandise available in the nearby grocery store would bring out in the minds of some the idea of registering a given domain name, with no other project than that of selling it to the most legitimate organization. Sometimes, reading a UDRP decision involving a geographical indication leaves a bitter taste. It would be an exaggeration to claim that third-party decision-makers indulge in a certain naivety, although this seems plausible in some cases. Indeed, panelists are bound by the legal regime of geographical indications, which, to say the least, has a lot to envy that of well-known marks. Nevertheless, in some cases, a careful analysis of the facts allows third-party decision-makers to brush aside the whimsical arguments of cybersquatters.
