About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consorzio per la Tutela del Formaggio Gorgonzola v. Whois Privacy, Private by Design, LLC / Gerald Baton

Case No. D2021-0722

1. The Parties

The Complainant is Consorzio per la Tutela del Formaggio Gorgonzola, Italy, represented by Jacobacci & Associati, Italy.

The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Gerald Baton, Ireland.

2. The Domain Name and Registrar

The disputed domain name <gorgonzola.blue> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 22, 2021.

The Respondent sent informal communications to the Center on March 22, 2021 and March 26, 2021.

The Center verified that the Complaint together with the amendment to 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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially April 26, 2021. On April 7, 2021, the Respondent sent a communication to the Center in which he requested an extension of the deadline to file a Response. The deadline to file a Response was extended until May 6, 2021. The Respondent filed a formal Response on May 6, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on May 20, 2021. 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 Complainant is an Italian consortium which is entitled under Italian law to control the use of the denomination of origin and trademark GORGONZOLA for a specific cheese. The name GORGONZOLA is also a Protected Designation of Origin (“PDO”) under the laws of the European Union.

The Complainant is the owner of trademark registrations including the name GORGONZOLA, including European Union Trade Mark number 010595015 for a figurative mark comprising a logo and the name GORGONZOLA, registered on July 4, 2012 for goods and services including “Cheese with protected registration ‘Gorgonzola’ ” in International Class 29.

The disputed domain name was registered on February 21, 2021.

At the time of filing the complaint, the disputed domain name resolved to a website at “www.gorgonzola.blue” offering pay-per-click (“PPC”) links to food-related products including cheeses (e.g., mozzarella and feta) unconnected with the Complainant. At the time of the decision, the disputed domain name resolves to the Registrar’s parked page.

5. Parties’ Contentions

A. Complainant

The Complainant states that it was created in 1968 to protect the name GORGONZOLA and that it operates under decree from the Italian government with sole authority to authorize the use of that mark.

The Complainant submits that the disputed domain name is identical or confusingly similar to its GORGONZOLA trademark, differing from that trademark only by the inclusion of the generic Top-Level Domain (“gTLD”) “.blue”, which is to be disregarded for the purposes of comparison. The Complainant adds that the use of that gTLD actually increases the likelihood of confusion, as the Complainant’s business includes blue cheeses.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent has not been known by that name and that it is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that the Respondent was obviously aware of the trademark GORGONZOLA when it registered the disputed domain name, as the name only otherwise refers to a small town in Italy. The Complainant submits that the Respondent is using the Complainant’s famous trademark and denomination of origin to lead to links including competing cheese producers.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent refers to previous cases brought by the Complainant under the UDRP. It refers for example to Consorzio per la Tutela del Formaggio Gorgonzola v. William Wise, WIPO Case No. D2017-0554 (domain name <gorgonzola.club>) and Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc., WIPO Case No. D2017-0253 (domain name <gorgonzola.city>), in both of which cases the Complainant’s claim was denied. The Respondent also refers to Consorzio per la Tutela del Formaggio Gorgonzola v. WhoisGuard, Inc. / John Tattersall, WIPO Case No. D2019-2848 (domain name <gorgonzola.best>), in which the relevant domain name was transferred to the Complainant. The Respondent states that the Complainant has since used that domain name to resolve to a PPC website including links to competing cheeses (e.g., ricotta and Boursin), which demonstrates that the Complainant is not genuinely seeking to protect the GORGONZOLA name from competing advertisers, but rather to “hijack” relevant domain names.

The Respondent submits that the underlying registrant of the disputed domain name is an Irish company, Cloud Disruption Ltd T/A Digital Chain. It states that that company has over the years acquired a portfolio of food and beverage related domain names for the purpose a “Wiki-style” blogs and a community information portal. It states that it acquired the domain name <cheese.network> for that purpose on September 1, 2020 and subsequently the domain name <cheeses.blue> in order to build a noncommercial information site about blue cheeses. It states that it has also acquired <danish.blue>, <roquefort.blue>, and <stilton.blue>, as well as the disputed domain name, for this purpose. It adds that it intends to extend its blogs to include recipes, tastings, events, links to producers, etc.

The Respondent states that, while it was aware that some products are protected by a PDO, it was not aware that GORGONZOLA was a trademark and that at no time during the registration procedure for the disputed domain name was it informed that it might be infringing upon trademark rights.

The Respondent accepts that the disputed domain name is confusingly similar to the Complainant’s trademark, but contends that its intention all along has been to use the disputed domain name for the purpose of a noncommercial blog. It states that this may in fact be beneficial to the Complainant by linking to official products.

The Respondent further submits that the Complainant failed to register the disputed domain name during the relevant “sunrise” period and that it was freely registrable by the Respondent after that time. The Respondent denies that it has been guilty of “cybersquatting” or any other form of bad-faith conduct in relation to the disputed domain name. It states that it stopped using the disputed domain name for the purpose of a PPC website as soon as it received notice of these proceedings.

The Respondent contends for the reasons stated above that the Complainant is attempting Reverse Domain Name Hijacking (“RDNH”) in this case.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in a figurative trademark comprising a logo and the name GORGONZOLA. In the view of the Panel, the name GORGONZOLA is the predominant recognizable part of that trademark. The Panel accepts the Complainant’s submission that the gTLD “.blue” is to be disregarded for the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy and the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c)(iii) of the Policy, a registrant may show that it has rights or legitimate interests in a domain name if it is: “… making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has submitted that the disputed domain name was registered, as part of a collection of related domain names, to provide a noncommercial Wiki-style website or blog providing information about GORGONZOLA and other blue cheeses.

On the balance of the available evidence, the Panel does not accept the Respondent’s explanation. In particular, while the Respondent has identified a number of domain names that it has registered since September 2020 in furtherance of its stated intention, none of those domain names resolved to any noncommercial information website at the date of the Panel’s review. In particular, the <cheeses.network> domain name resolved to a holding page, the domain name <cheeses.blue> did not resolve to any active website and the domain names <danish.blue>, <roquefort.blue>, and <stilton.blue> all resolved to PPC websites containing a variety of links. Nor has the Respondent exhibited any evidence of any preparations to use the disputed domain name, or indeed any of the domains names to which it refers, in accordance with its stated intention.

The Panel therefore concludes, on the balance of probabilities, that the Respondent registered the disputed domain name for the purpose of taking commercial advantage of the goodwill attaching to the Complainant’s GORGONZOLA trademark by attracting visitors to its PPC website under the mistaken impression of a connection between that website and the Complainant’s GORGONZOLA product. To target a trademark in this manner cannot give rise to rights or legitimate interests and the Panel finds therefore that the Complainant has met its burden in respect of this element.

C. Registered and Used in Bad Faith

The Respondent states that it was unaware that the Complainant owned a trademark for GORGONZOLA or that its registration of the disputed domain name would potentially infringe the Complainant’s rights. However, since the Respondent claims that it intended to create an information website about cheeses, it is obvious that it had the Complainant’s GORGONZOLA product (acknowledged to be a PDO) in mind when it registered the disputed domain name.

The Panel finds the mark GORGONZOLA, used by the Complainant since 1968, to be distinctive of the Complainant’s product and, for the reasons stated above, rejects the Respondent’s explanation for its registration of the disputed domain name. Furthermore, based on the use of the disputed domain name for a PPC website offering links to products not emanating from the Complainant, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel also notes that the Complainant has operated a website at the domain name <gorgonzola.com> since 1996.

The Panel will comment briefly on the previous cases cited by the Respondent in which the Complainant was unsuccessful, both of which turned upon their particular facts. In the Consorzio per la Tutela del Formaggio Gorgonzola v. William Wise (domain name <gorgonzola.club>) case, the panel found that the Complainant’s PDO was not of application in the United States, where the respondent in that case was located, and was being used legitimately to describe a local cheese of that name. In the Consorzio per la Tutela del Formaggio Gorgonzola v. Rob Monster / DigitalTown, Inc. (domain name <gorgonzola.city>) case, the panel found that the respondent was using the domain name legitimately to refer to the geographic region of Gorgonzola and not to target the complainant’s trademark. The facts of the present case are different from those cases for the reasons set out above.

The Panel also briefly addresses the Respondent’s contention that, in the case where it did obtain the transfer of the <gorgonzola.best> domain name, the Complainant then used that domain name to resolve to a PPC site, which also contained links to its competitors’ cheeses. While the Panel does not profess to understand the Complainant’s brand management decisions, that is not a matter that is within the remit of the Panel to consider. While the Complainant’s motivation could fall to be examined (on the question of RDNH) in a case where it failed to establish all three elements that is not of application in the present proceeding.

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gorgonzola.blue> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: May 30, 2021

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/