Gorgonzola is a town in Italy known for producing its eponymous cheese. The name “Gorgonzola” is protected by Italian and European legislation and, through international instruments, in dozens of other states, including, inter alia, South Africa, Canada (with restrictions), China, India, Israel, Japan, Mexico, the United Kingdom, and, Ukraine. A Google search for the term “Gorgonzola” provides more than 40 million results (search localized in the United States). Among these results, few refer to the charming town of Gorgonzola. It is the geographical indication that is notorious.
The European market for geographical indications alone represents nearly 75 billion euros (europa.eu, 2020-04-20). And the equation is well known: notoriety generates cybersquatting. However, the consortium in charge of protecting the appellation (Consorzio per la Tutela del Formaggio Gorgonzola) does not always succeed in extrajudicial procedures, as the following table shows:
To compare, a Google search for the “Velux” brand provides nearly 20 million results (search still located in the United States). Out of 47 out-of-court proceedings concerning domain names incorporating the “Velux” trademark that have come to an end, the owner of this trademark (VKR Holding A/S) won the case in 46 decisions (list of cases available here).
How to explain such a difference? A trademark consists in guaranteeing to the consumer the origin of the products or services so that the consumer can distinguish them from those of another source. A geographical indication consists in guaranteeing to the consumer the geographical origin of the products. The trademark and the geographical indication are business identifiers that share a common function: distinguishing products. In the context of the fight against cybersquatting, the main difference between trademarks and geographical indications relates to the source of the name. A trademark is the outcome of a process of intellectual creation, whereas a geographical indication adopts an existing toponym. The geographical indication being consubstantial with the toponym, a homonymy arises from this situation. Cybersquatters play on this ambiguity to claim that the domain name he has registered designates not the geographical indication but the toponym. Unlike domestic legislations of most countries and international instruments, the principles governing the out-of-court resolution of domain name disputes do not expressly protect geographical indications and toponyms. Cybersquatters can therefore lurk viciously behind fundamental freedoms (freedom of expression and freedom of trade and industry) to develop a sharp (or not) discourse on the alleged seriousness of their approach. Thus, cybersquatters place themselves in a position conducive to the acceptance by the representative of the producers of the expensive transfer of the domain name. And the subterfuge works.
In 1999, the final report of the World Intellectual Property Organization (WIPO) suggested removing trade names, geographical indications, and personality rights from protection against cybersquatting (Final Report of the WIPO Internet Domain Name Process, April 30, 1999, ompi.int, para. 167). The reasons were as follows:
- “the violation of trademarks (and service marks) was the most common form of abuse” (ibid.),
- “the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names132 and geographical indications” (ibid.).
Regarding the first reason, everyone can point out its incongruity. Why would we deprive ourselves of providing a complete answer to the problem of cybersquatting? For the second reason, trade names have been imported into the concept of “trademark” through that of “common law trademark, as well as personality rights when the victim has made use commercial of his name. In other words, the concept of “trademark” would be flexible enough to accommodate trade names and the names of natural persons, but not geographical indications. In addition, the protection of geographical indications is provided for in many multilateral international instruments. Moreover, since 1999, this protection has been considerably consolidated within the framework of bilateral agreements. Law is not set in stone. The reasons of 1999, neither preponderant nor conclusive, seem quite obsolete.
The very principle of recognizing the protection of geographical indications as business identifiers in the context of UDRP procedures is, therefore, not insurmountable and must be vigorously supported.
Implementing this protection is more challenging since cybersquatters know and exploit UDRP flaws. Therefore, panelists have the duty to show all the vigilance that their function requires to assess the sincerity and seriousness of the defendant’s statements. Indeed, web development tools allow slightly motivated cybersquatters to build a seemingly genuine website in no time, enough to disconcert the panelist. In this regard, the “Everything.sucks” cases demonstrated that brand owners and panelists were on the lookout (iptwins.com, 2021-08-10).
The audacity of panelists must respond to that of the cybersquatters. Technologies evolve, and law too. Imperfectly drafted, the principles governing the out-of-court settlement of disputes relating to domain names have required improvements based on tautological reasoning. The extension of the trademark concept (see above) is an example. The so-called “passive holding” theory is another and probably the most remarkable since, in essence, this theory makes it possible to assert that the absence of use constitutes use within the meaning of Article 4(a)(iii) of the UDRP principles. Similarly, regarding the criterion relating to the defendant’s legitimate interest, the panelists added a higher degree by adding the adjective “genuine“. Given that the defendant has the tools to build websites without too much effort, the assessment of the defendant’s interest must be higher. For example, the import (automatic or not) of content from third-party sites should not be sufficient to prove the legitimacy of the interest.
In light of the foregoing, decision D2022-0613, concerning the domain name < Gorgonzola.wtf>, raises eyebrows. This domain name was not used. The holder, apparently domiciled in the United States, did not take the opportunity to express his devouring passion for Gorgonzola’s blue cheese. Despite these circumstances, the panelist rejected the transfer request. The reasons that led the panelist to this decision are questionable and regrettable (WIPO D2022-0613, Consorzio per la Tutela del Formaggio Gorgonzola v. Privacy Protect, LLC (PrivacyProtect.org) / Spencer Hurst, April 13, 2022).
First, “Gorgonzola” would be a dictionary word, like the word “orange”. The comparison is awkward (see diagram below). In this respect, some dictionary publishers no doubt have their share of the responsibility, a fair practice consisting in not omitting the capital letter and specifying the legal status (trademark or geographical indication). There is definitely some work to be done there. The fact remains that intellectual property specialists are expected to appreciate the scope and legal effects of a term registered as a geographical indication. Can one seriously expect a jurist to brush aside such a legal status recognized in most jurisdictions simply by mentioning dictionaries whose legal scope is, to say the least, narrow and whose editorial choices are arbitrary?
“Gorgonzola” is a cheese that belongs to the family of “soft uncooked unpressed cheeses”, more commonly known as “blue cheeses”. In this case, the generic or descriptive terms are “cheese” and “blue”. As for the name “Gorgonzola”, it is protected as a geographical indication on a significant portion of the planet by means of national, regional, bilateral and international legal instruments (see above). This explains, among other reasons, why the domain name < Gorgonzola.blue> was transferred (WIPO, D2021-0722, Consorzio per la Tutela del Formaggio Gorgonzola v. Whois Privacy, Private by Design, LLC / Gerald Baton, May 30, 2021).
Secondly, decision D2022-0613 focuses on the country where the defendant indicated his domicile, namely the United States, thus applying the principle of territoriality. However, the UDRP principles do not require the complainant to own a trademark in the country in which the defendant indicated his domicile (WIPO, D2004-0532, Al Ghurair Group LLC v. Ghurair Group, November 4, 2004 ; WIPO, D2004-0749, Deutsche Telekom AG v. Oded Zucker, November 18, 2004 ; WIPO, D2012-2184, ORION CORPORATION v. Jang, Dong, February 7, 2013). Under the UDRP, the principle of territoriality of trademarks is inoperative.
Today, a few months after decision D2022-0613 was renduered, the domain name < Gorgonzola.wtf> opens a parking page. One can now enjoy the devouring passion of the defendant for Gorgonzola. But basically, nothing surprising. Undoubtedly, cybersquatting business identifiers is less tiring than getting up at dawn to milk the cows, a good and honest work!
