WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regulatory Board of the Rioja Qualified Designation of Origin (D.O.CA) v. Domain Hostmaster, Customer ID: 43528876679114, Whois Privacy Services Pty Ltd / Privacy.co.com, Inc Privacy ID# 1027108 / Kevin Daste
Case No. D2018-0168
1. The Parties
The Complainant is Regulatory Board of the Rioja Qualified Designation of Origin (D.O.CA) of Logroño, Spain, represented by Abanlex Abogados Law Firm, Spain.
The Respondent is Domain Hostmaster, Customer ID: 43528876679114, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Privacy.co.com, Inc Privacy ID# 1027108 of Cheyenne, Wyoming, United States of America (United States) / Kevin Daste of New Orleans, Louisiana, United States.
2. The Domain Name and Registrar
The disputed domain name <rioja.com> is registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response before this deadline. Accordingly, the Center notified the Respondent’s default on March 2, 2018. On March 5, 2018, the Center was notified by the Registrar that, due to a recent acquisition, the name of the Registrar as well as the name of the WhoIs privacy company had changed. The Registrar furthermore informed the Center that this change had taken place around February 9, 2018.
On March 8, 2018, the Center received an email communication from a person claiming to be the registrant of the disputed domain name, and thereby the Respondent in this case. In this email communication, the Respondent claimed to not have received any of the Center’s previous email communications as a result of the acquisition referred to above. Considering the exceptional circumstances pointed out by the Respondent, the Center granted a 20-day extension of the due date for Response, and forwarded the Notification of Complaint emails (including attachments) to the newly identified Respondent. The new due date for Response was March 29, 2018. The Respondent submitted its Response on March 30, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on April 20, 2018. 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 Rules, paragraph 7.
4. Factual Background
The word “Rioja” is a “Qualified Designation of Origin”, a Spanish regulatory classification used to regulate quality and geographical origin of wines / foodstuffs produced in various regions – in this case, wine produced in the autonomous communities of La Rioja, the Basque Country, and Navarre. Due to the diverse conditions in these areas, there are three production sub-areas - Rioja Alta, Rioja Baja, and Rioja Alavesa – where wines of different characteristics originate.
The Complainant is an official body, created by the Spanish Minister of Agriculture, Fisheries, and Food in 1991 to perform various functions including the promotion and defence of the Rioja Qualified Designation of Origin.
Amongst others, the Complainant owns the following trade marks which all comprise the stylised word “Rioja” incorporated within a device and are all registered in class 33 for alcoholic beverages:
- International Trade Mark No. 470948, registered September 2, 1982;
- Swedish Trade Mark No. 188572, registered October 14, 1983;
- Spanish Trade Mark No. M1927658, registered May 1, 1995;
- International Trade Mark No. 655291, registered June 10, 1996.
Since 1997, the Complainant has operated a website at “www.riojawine.com”, promoting the Rioja Qualified Designation of Origin.
The disputed domain name was registered on November 7, 1996.
At various times, the disputed domain name has resolved to a website inviting potential buyers to make an offer to buy the disputed domain name or to request a price quote.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
Wine bearing the “Rioja Qualified Designation of Origin” can be identified by its numbered labels and seals, and is one of the designations of origin that are best known by consumers around the world.
The Complainant uses a variety of symbols, internationally registered trade marks, and Internet domain names related to the Rioja Qualified Designation of Origin.
The disputed domain name is confusingly similar to the Complainant’s registered trade marks.
The disputed domain name is identical to the text component of the trade marks, which can therefore be identified within the disputed domain name.
The Rioja brand is one of the main designations of origin used to mark wines from particular regions such as Bordeaux, Burgundy, and Champagne.
The fame of the term “Rioja” in relation to wine is based on the familiarity that the public and consumers have in relationship with the brand, its sales around the world, and its marketing reach.
A study by the prestigious consulting firm “Wine Intelligence”, commissioned by the Spanish Wine Market Observatory, found that Rioja leads the world ranking in terms of the conversion of brand familiarity into sales, surpassing the wines of regions like Bordeaux, Burgundy, and Chianti, with figures as “spectacular” as 49% in the UK (1st), 48% in Switzerland (2nd), 40% in Germany (1st), and 38% in the United States (3rd). Whereas the Bordeaux figures in those same countries are 29% in the UK (4th), 36% in Switzerland (3rd), 24% in Germany (5th), and 17% in the United States (14th). Chianti, another well-known region, gets 20% in the UK (12th), 26% in Switzerland (7th), 17% in Germany (11th), and 23% in the United States (8th).
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to use its trade marks.
The Respondent holds no registered trade marks for “Rioja”.
There is no evidence that the Respondent is undertaking a legitimate business activity under the name “Rioja” or making any commercial offer of goods or services. The Complainant is not aware that the disputed domain name has ever been used since its registration in 1996.
The Respondent did not hold any prior rights in relation to the term “Rioja” at the time of registration of the disputed domain name in 1996; nor does the Respondent hold any such rights presently.
The registration and use of the Complainant’s trade marks long pre-date registration of the disputed domain name. The general public familiarity with the term “Rioja” predates even the creation of the World Wide Web. No one can claim a lack of familiarity with the name.
There is nothing to show that the Respondent has generally been known by the disputed domain name or that it is making legitimate and fair use of the disputed domain name.
The disputed domain name has been registered in bad faith.
Given the fame of the term “Rioja” at the time of registering the disputed domain name, the person responsible for the disputed domain name’s registration, now the Respondent, presumably had prior knowledge – or was at least in a position to know – of the existence of the term “Rioja” and to be familiar with the business activity or existence of the Complainant – a business activity that involves the regulation and promotion of the Rioja Designation of Origin. This is one of the factors which panels take into account when assessing bad faith.
The Respondent’s registration of the disputed domain name also breaches the Respondent’s undertaking in the registration services agreement with its Registrar not to infringe third party rights through its registration or use of the disputed domain name.
The Respondent’s clear intent to sell the disputed domain name combined with the Respondent’s inactivity over the years indicates that the disputed domain name was registered in light of the Respondent’s prior familiarity with the name and brand “Rioja” – with the aim of profiting from third party rights. The Respondent has attempted to sell the disputed domain name to the Complainant, presumably for an amount that exceeds the various costs directly associated with the disputed domain name.
The disputed domain name has also been used in bad faith.
The Respondent’s failure to use the disputed domain name for any legitimate content is indicative of bad faith, namely that the disputed domain name was registered to block the Complainant from using its mark in the disputed domain name.
The Respondent’s use of the term “Rioja”, which is identical to the Complainant’s trade mark registrations, generates confusion amongst Internet users who visit the Respondent’s website, because they are attracted by familiarity with the Rioja Designation of Origin.
The disputed domain name constitutes a passive holding in bad faith.
A summary of the Respondent’s contentions is as follows:
The rights claimed in the domain name by the Complainant are not valid.
First, the use of the domain name <riojawine.com> shows that the Complainant is representing wine from the geographic region of Rioja. As the Complainant notes, it was created to market and promote the term as it relates to wine, which does not provide it with rights to the general geographic term.
Second, all of the marks supplied by the Complainant are either figurative, word marks that incorporate multiple words (and so not identical to the disputed domain name), or marks that were registered after the disputed domain name.
Third, the Complainant is not itself a producer of the goods. A geographical indication does not, per se, distinguish the wine of one producer from another, and so does not fulfil the fundamental function of a trade mark.
Fourth, the term Rioja is geographic, referring to provinces in Argentina, Peru, Andalusia, and Spain.
Merely using a geographic term does not constitute confusing similarity.
The Complainant has demonstrated no use of its alleged mark or the disputed domain name that will lead to confusion or dilution.
The Complainant relies on documents which it itself drafted in order to establish “worldwide prestige”.
The Respondent makes fair use of the domain name. He operates many other websites and plans to develop the disputed domain name as well. Examples of his other domain names include <neworleansaccountants.com> and <localclasses.com>.
The Complainant makes false assumptions in relation to bad faith.
The Respondent had no prior brand familiarity. Nor did he attempt to profit from third party rights. The Respondent paid a large amount to acquire the disputed domain name.
The Complainant has not proved registration or use in bad faith and simply presumes ill intent.
The Respondent has made legitimate, fair use of the domain name. He simply acquired a domain name that incorporated a geographic name and is using it in a manner which does no more than take advantage of that descriptive meaning. There has been no capitalisation on the Complainant’s trade mark value.
The Respondent had no knowledge of the term “Rioja” in relation to wine at the time of registration of the disputed domain name.
The Complainant does not have exclusive rights to the disputed domain name because it is only associated with one aspect of life in the entire region and there are other regions in the world with the same name.
Although the disputed domain name has been listed for sale to the general public while awaiting development, the Respondent has not attempted to sell the disputed domain name to the Complainant.
6. Discussion and Findings
A. Late Response
As mentioned in section 3 above, the Response was received one day late.
Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence.
While the Respondent should have provided an explanation, the Complainant has not objected to admission of the Response and it seems unlikely that the Complainant will have been in any way prejudiced by the very short delay.
Accordingly, the Panel has decided to admit the Response.
B. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s (figurative) trade marks identified in section 4 above, each of which includes the word “Rioja” as the only textual element. Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark, and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
The Respondent objects that “Rioja” is a geographic term, referring to provinces in Argentina, Peru, Andalusia, and Spain and that it is not capable of distinguishing the wine of one producer from another and so does not fulfil the fundamental function of a trade mark. However, section 1.6 of the WIPO Overview 3.0, makes clear that geographical terms, even if used in their ordinary geographical sense, provide standing for the purposes of this first element of the Policy if registered as trade marks – as is the case here.
Although not expressly, the Complainant also appears to invoke unregistered trade mark rights in the term “Rioja”. Here the position is less straightforward.
“Panels have exceptionally found that geographical terms which are not registered as trade marks may support standing to file a UDRP complaint if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the mark in relation to the complainant’s goods or services (often referred to as secondary meaning)…
It is further noted that the Report of the Second WIPO Internet Domain Name Process ultimately declined to recommend specifically extending protection to geographical terms as such under the UDRP.”
That report, released on September 3, 2001, acknowledged that there were existing international norms that prohibited false and deceptive indications of geographical source on goods, but noted that those norms were confined to the use of terms on goods, and that there was no uniformly agreed international list of geographical indications. The report concluded that the international framework needed to be further developed before the use of geographical indications as domain names could be adequately addressed.
The Panel has reviewed the helpful UDRP decision of Comité Interprofessionnel du vin de Champagne v. Steven Vickers, WIPO Case No. DCO2011-0026 concerning the domain name <champagne.co>, which raised similar issues to those here.
In that case, the French statutory body set up to protect the interests of Champagne producers (“CIVC”) failed to establish rights in the term “Champagne” under the first element of the Policy. Unlike here, CIVC did not possess any registered trade marks.
The panel rejected CIVC’s reliance on Champagne as a “protected designation of origin” and “geographical identifier” under relevant EU regulations on the grounds that geographical indicators remained outside the scope of the Policy.
As regards CIVC’s reliance on unregistered trade mark rights, the panel said this:
“In this case, the Panel is not satisfied that the Complainant has shown that its rights in the expression ‘Champagne’ constitute an unregistered trade mark right of the kind that would satisfy paragraph 4(a)(i) of the Policy. First, the Panel notes that it is generally accepted that, to be a trade mark, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings. It seems to this Panel that a geographical indication per se does not distinguish the wine of one champagne producer from the wine of another, and so does not fulfill the fundamental function of a trade mark of distinguishing the goods or services of one undertaking from those of other undertakings. A geographical indication is essentially designed to achieve a somewhat different purpose, namely to protect the producers of a particular region from loss caused by traders wrongfully applying that identifier to goods which have not been produced in the particular region, thereby appropriating to themselves the goodwill arising out of the reputation for quality which the producers of the protected products have built up. It seems to this Panel that geographical indications speak fundamentally of the quality and reputation of the goods produced according to certain standards in a specific geographic area, but not of any particular or individual trade source as such.
More fundamentally still, this Panel finds it apparent from the WIPO Reports referred to above that the framers of the Policy did not intend that geographical indications or ‘protected designations of origin’ should provide a basis as such for a ‘right’ under paragraph 4(a)(i) of the Policy. That intention could be easily defeated if the fact that a protected geographical indication may happen to be enforceable under the UK law of passing off were somehow regarded, and solely on that basis, as necessarily conferring unregistered trade mark or service mark status on that geographical indication for the purpose of establishing standing under the first element of the Policy.
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 ‘trade mark 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 ‘trade mark 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 trade mark rights in a ‘Champagne’ mark has therefore not been made out…”
This Panel respectfully agrees with the above approach and considers that it applies equally here.
In this case, the Complainant’s evidence as to the “worldwide prestige” of Rioja wine consists of a range of statistical information relating to sales of wine by Rioja producers as a whole.
The Complainant has provided no evidence about its role in such activities or the degree of recognition, if any, that its trade marks have attained. It has failed to demonstrate the distinctiveness of the term “Rioja” as an identifier of an individual trade source or to otherwise explain precisely why it should be treated as possessing unregistered trade mark rights in that term.
Accordingly, the Complainant has failed on the present record to establish unregistered trade mark rights in the term “Rioja”.
Nonetheless, for the above reasons, in particular the Complainant’s various registered trade marks noted above, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy on the basis of its registered trade mark rights.
C. Rights or Legitimate Interests
It is unnecessary to consider this aspect in light of the Panel’s conclusion under the third element below.
D. Registered and Used in Bad Faith
Section 3.1 of the WIPO Overview 3.0 explains that “bad faith” is broadly understood to occur where a respondent takes unfair advantage or otherwise abuses a complainant’s mark (emphasis added) and that the burden of proof of demonstrating this rests with the complainant.
The Complainant argues that, when it acquired the disputed domain name, the Respondent “presumably” had prior knowledge – or was at least in a position to know – of the existence of the term “Rioja” and to be familiar with the business activity or existence of the Complainant – a business activity that involves the regulation and promotion of the Rioja Designation of Origin.
However, as mentioned in section 6B above, and even though in some respects they may be seen as interlinked, the Complainant’s evidence does not adequately distinguish between the fame of Rioja as a wine with certain characteristics emanating from a certain region, as opposed to the fame of the Complainant’s marks.
For example, the Complainant cites a report on “the Rioja ‘brand familiarity’ ranking”, suggesting that the Respondent knew of and targeted the “Rioja brand” when registering the disputed domain name, but it has not provided evidence to show that, in doing so he was necessarily targeting the Complainant itself and/or the Complainant’s marks
The Complainant might have provided evidence as to the extent to which, if at all, the Designation of Origin or the Complainant’s marks feature on product labels or packaging or in any marketing. While the Complainant does say that wine bearing the “Rioja Qualified Designation of Origin” can be identified by its numbered labels and seals, it has not provided any evidence of such labels and seals and so it is not possible to draw any conclusion as to what, if anything, such labels and seals might convey to the public regarding the Complainant or its trade marks. If the Complainant simply means that the words “Rioja Qualified Designation of Origin” appear on all labels of Rioja wine, the Panel remains to be convinced that that would suffice to alert the average member of the public to the Complainant’s trade marks.
For its part, the Respondent denies knowledge of the relationship of the term “Rioja” in relation to wine at the time of registration of the disputed domain name. The Panel is somewhat sceptical about this assertion and notes that the Respondent has provided no evidence in support of his claim to have acquired the disputed domain name purely for its geographic meaning. Nor has he explained what alleged “development” he had in mind for the disputed domain name in connection with its geographical meaning, nor why this has not yet occurred.
Indeed, the Panel considers various other aspects of the Response to be unsatisfactory – and the Complaint also. For example, the Complainant’s exhibits include various parking pages on the Respondent’s website with subject headings such as “Rioja”, “La Rioja”, and “Spanish Red Wine”, amongst others (but none relating specifically to the Complainant). The Complainant makes no mention of these pages in the Complaint, apparently considering that such usage was of limited significance. The Respondent also avoids referring to such use of the disputed domain name, contenting himself with a general statement that he has made legitimate “fair use” of the disputed domain name. The page is currently inactive, a fact which has not been explained by the Respondent, This raises the question as to whether the Respondent removed the previous parking page as a defensive step, which could be seen as an admission of sorts.
Also, the Complainant appears to suggest that it has reason to believe that the Respondent was not the first registrant of the disputed domain name, referring at one point to “the person responsible for the disputed domain name’s registration, now the Respondent”. But the Complainant has provided no past ownership details and the Complaint proceeds on the basis that the Respondent should be treated as having acquired the disputed domain name as of the date of first registration. If the Complainant considered this to be material to the Complainant’s case, the Panel would have expected it to provide a more detailed factual picture. The Respondent does not clarify matters by revealing exactly when he acquired the disputed domain name. The Panel considered issuing a panel order requesting further information regarding the date of acquisition of the disputed domain name but ultimately decided not to as the Panel felt it unlikely that this issue would affect the outcome of this case in the particular circumstances here.
In any event, the Panel does not consider that either party has provided it with a clear account of the circumstances surrounding registration and use of the disputed domain name.
The Panel has considered the matter carefully on the basis of the record before it. The Respondent’s rather formulaic defence and lack of openness has certainly given the Panel pause for thought. However, notwithstanding the weaknesses in the Respondent’s case, the Panel has not been given a good reason to conclude that, whenever the Respondent registered the disputed domain name, it most likely did so with reference to the Complainant’s trade marks, rather than (a) purely for its geographical meaning, as the Respondent claims or (b) more likely, but also uncontroversial in the context of this case, because it reflected a kind of wine which emanated from a particular region and bore a particular style or quality. The Complainant’s case on this crucial issue never moved beyond a presumption.
Bearing in mind that, ultimately, the burden is on the Complainant to prove its case on the balance of probabilities, the Panel has concluded that the Complainant has failed to establish the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: May 4, 2018