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question Domains that include Products with PDOs (Protected Designation of Origin)

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LucyC

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I would like to hear thoughts on this; suppose a person registered a domain name that included a product with a PDO (Protected Designation of Origin) or with some similar official protection - could this be considered 'trademark infringement' for a UDRP if used in bad faith?

It's a general query as I am in the market of foodstuffs and wanted to ask out of curiosity!
 
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No, but there are conditions
The trademark owner should not be contacted and offer the domain for sale to the trademark owner.
Domain visitors should not be directed to sites competing with the trademark owner.
That the domain is not used in the same activity as the trademark owner.
It does not cause a confusing resemblance and is not just a similarity
It is best to consult a specialized lawyer

Global Brand Database:

https://branddb.wipo.int/en/quickse...{"boolean":"AND","bricks":[]}&_=1719321647075
 
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No, but there are conditions
The trademark owner should not be contacted and offer the domain for sale to the trademark owner.
Domain visitors should not be directed to sites competing with the trademark owner.
That the domain is not used in the same activity as the trademark owner.
It does not cause a confusing resemblance and is not just a similarity
It is best to consult a specialized lawyer

Oh of course, this question was purely out of curiosity where there is no trademark as such but a PDO, I guess this would be 'common law' and how well the complainant is associated with that name/product(s)?

I registered ScottishSalmon.uk today (supportive for Fishmongery.com), not even sure there is a PDO but it got me thinking!

A .com example 'SheffieldSteel.com' where I have had similar thoughts and drawn up a responding argument in my head! :ROFL:
 
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The UDRP was drafted to specifically exclude PDO's in the first element requiring identity or confusing similarity to a "trade or service mark" in which the complainant has rights.

PDO's were considered in the First WIPO Report:

https://www.wipo.int/amc/en/processes/process1/report/finalreport.html

167. The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that 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 names and geographical indications.


HOWEVER, it is worth noting that many organizations responsible for protected appellations of origin also have established trademark rights. So, for example:

Parmagiano.com - Transfer
https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0661.html

ItalyParmaHam.com - Transfer
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1561

But this has also led to some conflicting results:

ColombianCoffeeWholesale.com - Transfer
https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0219.html

ColombianCoffee.com - Complaint Denied
https://www.wipo.int/amc/en/domains/decisions/pdf/2022/d2022-4022.pdf

gorgonzola.wtfWIPO D2022-06132022-04-13Complaint denied
gorgonzola.blueWIPO D2021-07222021-05-30Transfer
gorgonzola.infoWIPO D2021-06902021-05-20Complaint denied
gorgonzola.bestWIPO D2019-28482020-01-31Transfer
gorgonzola.clubWIPO D2017-05542017-05-14Complaint denied
gorgonzola.cityWIPO D2017-02532017-04-12Complaint denied

And everyone's favorite example:

Champagne.co
https://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2011-0026

That case has one of the best explanations of where, roughly, you might expect a line to be drawn:

While every protected geographical indication may inevitably become distinctive of the reputation for particular style or quality which is associated with the relevant protected goods, it seems to this Panel that that is not the kind of “acquired distinctiveness” which will of itself be enough to confer “trademark or service mark” status for the purposes of paragraph 4(a)(i) of the Policy. As this Panel sees it, to hold otherwise would be to turn on its head the decision made by the framers of the Policy, that geographical indications as such would not be within the Policy’s scope. “Champagne” may be among the world’s most famous geographical indications, but that in itself is not enough for it to qualify as an unregistered “trademark or service mark” under the Policy. For a geographical indication to be found to have acquired such status, something more than potential eligibility to succeed in a passing off action would be required. In particular, it would be necessary to show distinctiveness as an identifier of an individual trade source. On the record in this proceeding, the Panel is not persuaded that the Complainant has proved that kind of distinctiveness under the Policy. The Complainant’s claim that it possesses unregistered trademark rights in a “Champagne” mark has therefore not been made out. There having been no evidence provided to the Panel of the Complainant possessing any relevant registered trademark or service mark, the Complainant has failed to make out its case under paragraph 4(a)(i) of the Policy.

Some of that is going to involve a look at market reality. For example, there is a lot of cheese made in the style of "feta" outside of Greece. In the US, I doubt consumers of feta cheese have any idea that it means more than a particular style of crumbly semi-soft cheese. On the other hand, something like balsamic vinegar of Modena is probably more widely understood as having come from Modena, but probably because it is more of a niche product.

It's also going to depend to some extent on which panelist(s) are assigned to the case, since there are probably very different opinions among panelists on the topic of what threshold is needed for a PDO which is not a registered mark to qualify for treatment as a trade or service mark.
 
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Thank you, Mr. Berryhill for answering my question in so much detail. I will very much enjoy reading through the 'final report' & all the cases you have so kindly taking the time to list.

You really should consider opening a 'buymeacoffee' account! @jberryhill

One thing which I thought about was with GIs/PDOs (and even trademarks), regardless with them generally being of 'collective ownership' and I have found references to the 'commonalty' - wouldn't those within the designated geographical area have equal legal rights to the mark(s)? Of course, I guess it would also be a question of how the domain name is being utilised, but theoretically if a complainant and respondent could both contest to having legal rights to a mark... ?

'In particular, it would be necessary to show distinctiveness as an identifier of an individual trade source.'

I guess, as with having/not having a trademark, and otherwise how protective and tenacious of their GI/PDO have they been? Maybe, if such things had been screamed and shouted about from early on the market reality would be different?
 
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You really should consider opening a 'buymeacoffee' account! @jberryhill

Every year, I participate with Elliot Silver in a fundraising cycling event for cancer research and treatment programs of the Dana Farber Cancer center. This year, Elliot and I are up to a combined $20,000 in donations. The expenses of the effort are paid separately by the riders and and volunteers for the event (for example, my entry fee was $250). Every donated dollar goes to treat cancer patients who cannot afford treatment, and to cancer research. Last year, the event raised over $72 million, and we expect to break that record again this year.

You can learn more about the ride here: https://profile.pmc.org/JB0722

wouldn't those within the designated geographical area have equal legal rights to the mark(s)? Of course, I guess it would also be a question of how the domain name is being utilised, but theoretically if a complainant and respondent could both contest to having legal rights to a mark... ?

For those indications which are primarily geographic, yes, there have been instances in which the respondent was using the domain name for its geographic meaning.

The right to use geographic terms in a descriptive way is, of course, not limited to those within the area in question - or even multiple areas in question:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1278
 
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Every year, I participate with Elliot Silver in a fundraising cycling event for cancer research and treatment programs of the Dana Farber Cancer center. This year, Elliot and I are up to a combined $20,000 in donations. The expenses of the effort are paid separately by the riders and and volunteers for the event (for example, my entry fee was $250). Every donated dollar goes to treat cancer patients who cannot afford treatment, and to cancer research. Last year, the event raised over $72 million, and we expect to break that record again this year.

You can learn more about the ride here:



For those indications which are primarily geographic, yes, there have been instances in which the respondent was using the domain name for its geographic meaning.

The right to use geographic terms in a descriptive way is, of course, not limited to those within the area in question - or even multiple areas in question:

Phenomenal and an inspiration you are, Mr. Berryhill. I have made a little donation, I hope it goes well - that's an incredible amount. I don't think we really appreciate how lucky we are in the UK with our health system.

'Here the Panel chooses not to make one, while cautioning the Complainant (or perhaps more accurately, its advocate) in future to limit its invocation of the Policy to proper cases fully and fairly presented.' -

I'm surprised with this, I would have slapped them with a RDNH, if self-represented - sure, but 'A reader of the site will find quite different content.' , 'Respondent denies to have registered the disputed domain name in bad faith and states that it intended to obtain geographically descriptive domain names in his locality' and of course, the contradiction between filings as per the bottom.

This (below) is also really, really interesting, though subjective and panel-dependent I guess?

'First of all, the Panel emphasizes that the term “Cambridge” itself does not have a high degree of distinctiveness or originality, since it refers to geographical locations in the United Kingdom and the United States. Thus, the use of this term may not be forbidden to other companies, whether they are direct competitors of the Complainant, or active in other business branches. Since “Cambridge” is a well-known geographical reference, it is not terribly surprising that other companies may have an interest in using this term in their business or to register it as a compound of a domain name.'

'by the Complainant, is not likely to misleadingly divert consumers or to tarnish the trademark at issue.'

'Moreover, the content available on the website is merely informative, and there is no element that is likely to tarnish the Complainant’s trademark.'


I've been invited down to the Welsh gov. next month for a meeting (re: their cheeses), and other sorts of invites gradually trickling through; whereas I don't expect to be having any conversations explicitly relating to these types of domain names anytime soon I do think it's prudent on my part to have some understanding of the ecology and distribution, plus general people's perspectives on how these types of domain names should be handled.

With it somewhat of a grey area, I also wonder if, theoretically, to overcome the 'trademark/service mark threshold,' a complainant could reference the nature of the website and how the domain name is being used to confirm the presence of a 'trademark/service mark' (if applicable)?

(I do love reading these when I can regardless, I'm trying to locate the 'roquefort.com' case!)
 
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I don't think we really appreciate how lucky we are in the UK with our health system.
Wow, do people actually still believe that?

:ROFL:
 
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Wow, do people actually still believe that?

:ROFL:
Yes.

I am grateful for the compassion and treatment a close relative received when battling cancer and I am grateful they didn't have the worry of a medical bill mounting up, covered or not - but I appreciate that is my/our own personal experience and I am not yet wholly aufait with the US or other healthcare systems.
 
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For example, there is a lot of cheese made in the style of "feta" outside of Greece. In the US, I doubt consumers of feta cheese have any idea that it means more than a particular style of crumbly semi-soft cheese.

In Polish, feta primarily means celebration, although the cheese meaning is probably more prevalent now (and yes, we use it for every salty white cheese). In the global market there are going to be many different meanings of every (especially short) word. I remember the wipo case with pupa.com. For some it's an Italian cosmetics brand, while for others it's just a stage of insect metamorphosis, and for me (in Polish) it's a baby's bottom... :asshat:
 
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I've been invited down to the Welsh gov. next month for a meeting (re: their cheeses)

Any organization responsible for a PDO should consider seeking protection of the PDO as what is called a "certification mark". These are types of trademarks in which the trademark owner is not the producer of the goods or services, but which establishes some kind of standard required of others who are licensed by the certification mark owner to produce the goods or services bearing the mark.

Interestingly, one of the better known Welsh cheeses, named after its place of origin in Caerphilly, is a registered mark for cookware owned by a private company. That would not, of course, preclude seeking certification mark protection for Caerphilly, so long as it does function in the marketplace as indicating that the cheese is made in accordance with whatever standard is required by the certifying organization.
 
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In Polish, feta primarily means celebration, although the cheese meaning is probably more prevalent now (and yes, we use it for every salty white cheese). In the global market there are going to be many different meanings of every (especially short) word. I remember the wipo case with pupa.com. For some it's an Italian cosmetics brand, while for others it's just a stage of insect metamorphosis, and for me (in Polish) it's a baby's bottom... :asshat:
Which is sad, because in reality actually tasting the genuine PDO product it's another breed entirely.

Thinking out loud, maybe it would be worth investigating and possibly raising general public awareness to the PDO badge to restore some control and distinguish quality? I personally had no idea what PDO and the badge meant until I got into the cheese business.


That case has one of the best explanations of where, roughly, you might expect a line to be drawn:

While every protected geographical indication may inevitably become distinctive of the reputation for particular style or quality which is associated with the relevant protected goods, it seems to this Panel that that is not the kind of “acquired distinctiveness” which will of itself be enough to confer “trademark or service mark” status for the purposes of paragraph 4(a)(i) of the Policy. As this Panel sees it, to hold otherwise would be to turn on its head the decision made by the framers of the Policy, that geographical indications as such would not be within the Policy’s scope. “Champagne” may be among the world’s most famous geographical indications, but that in itself is not enough for it to qualify as an unregistered “trademark or service mark” under the Policy. For a geographical indication to be found to have acquired such status, something more than potential eligibility to succeed in a passing off action would be required. In particular, it would be necessary to show distinctiveness as an identifier of an individual trade source. On the record in this proceeding, the Panel is not persuaded that the Complainant has proved that kind of distinctiveness under the Policy. The Complainant’s claim that it possesses unregistered trademark rights in a “Champagne” mark has therefore not been made out. There having been no evidence provided to the Panel of the Complainant possessing any relevant registered trademark or service mark, the Complainant has failed to make out its case under paragraph 4(a)(i) of the Policy.

Some of that is going to involve a look at market reality. For example, there is a lot of cheese made in the style of "feta" outside of Greece. In the US, I doubt consumers of feta cheese have any idea that it means more than a particular style of crumbly semi-soft cheese.

Essentially 'feta' has lost that 'distinctiveness', therefore highly difficult to argue a claim upon even with the cheese.

Fancy purchasing 'Pupa.com' and starting a baby wipe brand or would that be sailing too close to the wind? 💨💩😉
 
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Any organization responsible for a PDO should consider seeking protection of the PDO as what is called a "certification mark". These are types of trademarks in which the trademark owner is not the producer of the goods or services, but which establishes some kind of standard required of others who are licensed by the certification mark owner to produce the goods or services bearing the mark.
Thank you, that's an invaluable piece of information. Pretty sure that's what I've been looking at with the 'Made in Sheffield' mark, 'criteria include being located within the 'S' postcode area and demonstrating a commitment to high-quality production',

Interestingly, one of the better known Welsh cheeses, named after its place of origin in Caerphilly, is a registered mark for cookware owned by a private company. That would not, of course, preclude seeking certification mark protection for Caerphilly, so long as it does function in the marketplace as indicating that the cheese is made in accordance with whatever standard is required by the certifying organization.

I've looked at that 'Caerphilly' mark...

'Caerphilly' - Class 21, File date: 16th January 2018.

'Traditional Welsh Caerphilly/Traditional Welsh Caerffili' (PGI) -

All Classes 1-45 (I'm assuming this is due to the nature of the PGI but interesting as it also has Class 21 'included'... I'm not sure how that would play out, unless the marks are not viewed as confusingly similar? )

Registered EU: 30th January 2018
Registered UK: 31st December 2020 (apparently Brexit-related and UK's own GI schemes?)

Having a look at this example in a little more depth, I believe 'Caerphilly' isolated was losing/had lost its 'distinctiveness' within the cheese market - plenty of recipes for making 'Caerphilly' at home and evidence of mass-produced products labelled as 'Caerphilly' by a multitude of brands. I feel the PGI (above) is a response to regulate and regain distinction, and protection for the original product and its heritage.
 
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Thought I'd check out the '.com' to see what it was doing. As it was for sale at a very reasonable price... you can also catch me at [email protected] 😁
 
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