Comité Interprofessionnel du Vin de Champagne v Jackson, Court of Appeal - Nominet UK Dispute Resolution Service, August 17, 2007, [2007] DRS 4479

Resolution Date:August 17, 2007
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Comité Interprofessionnel du Vin de Champagne v Jackson
 
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Nominet UK Dispute Resolution ServiceDRS 4479Comité Interprofessionnel du Vin de Champagne v Steven Terence JacksonDecision of Appeal Panel  1. Parties Complainant/Appellant: Comité Interprofessionnel du Vin de ChampagneFrance Respondent: Steven Terence JacksonUK 2. Domain Name  3. Procedural Background A Complaint in respect of (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy ("the Policy") was received from the Complainant and forwarded to the Respondent by Nominet on 21 February 2007. A Response was received from the Respondent on 13 March 2007 and the Complainant lodged a Reply on 23 March 2007. On 27 April 2007 Claire Milne was appointed as Independent Expert to determine the dispute in accordance with Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”). She confirmed to Nominet that she was independent of the parties and knew of no facts or circumstances that might call into question her independence in the eyes of the parties.The Expert agreed to consider a non-standard submission that had been sent to Nominet by the Complainant on 28 March 2007 on the basis of a short statement given by the Complainant in accordance with paragraph 13(b) of the Procedure. The Respondent was invited to comment on the Complainant’s non-standard submission and did so on 18 May 2007.By her decision dated 15 May 2007 the Expert found that the Complainant had Rights (as defined in the Policy) in a name or mark that was identical or similar to the Domain Name; but that in the hands of the Respondent the Domain Name was not an Abusive Registration (as so defined). Accordingly she dismissed the Complaint and thereby directed that no action be taken in respect of the Complaint. A Statement of the Complainant’s Intention to Appeal was received by Nominet on 1 June 2007. The Appeal Notice was received by Nominet and forwarded to the Respondent on 22 June 2007. An Appeal Notice Response was lodged by the Respondent on 5 July 2007.On 11 July 2007 an Appeal Panel of three Experts (the “Panel”) was appointed to determine the Appeal, comprising Ian Lowe as Chairman together with Matthew Harris and Mark de Brunner. All three Experts confirmed that they were independent of the parties and knew of no facts or circumstances that might call into question their independence in the eyes of the parties.Paragraph 10a of the Policy provides that “The appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters”. We have therefore approached this Appeal as a reconsideration of the merits based on the submissions of the parties. However, since we have reached a different view from the original Expert in a number of respects, we summarise the reasoning of the Expert below. 4. The Facts The Complainant is a body established under French law by a decree dated 12 April 1941 (as amended). It has legal personality and the right to bring and defend court proceedings. It was formed for the purpose of defending, preserving and promoting the interests of those involved in the production and marketing of wines sold under the appellation of origin (appellation d’origine contrôlée - “AOC”) Champagne. Growers in the Champagne region and wine-makers, dealers and merchants of champagnes are represented on the Complainant.The Respondent is an individual with diverse business interests. According to the Nominet WhoIs database, the Domain Name was registered on 10 June 1997. At the date of the Complaint the Domain Name resolved to a web page comprising a number of links to websites providing advice in relation to claims for personal injuries and accidents (apparently generated by an Internet search in respect of “accident claims”) and a link to a personalised number plate website at www.new.reg.com.At some point subsequent to receipt of the Complaint, the website to which the Domain Name resolved changed and took the form of a business selling champagne. 5. The Parties’ Contentions Complainant The Complainant’s contentions - distilled from the original Complaint and the Reply to the Response to the Complaint - are as follows.RightsThe Complainant has well established and recognised rights in a name identical to the domain name.The Complainant was created under French law to defend and promote the interests of those involved in producing and marketing wines sold under the appellation of origin ‘champagne’. All producers of champagne in the Champagne district of France are required by law to subscribe to the Complainant.Since 1973, European Community law (in particular, Council Regulation (EC) No. 510/2006 and its predecessors) has regulated the use of ‘champagne’ as an appellation of origin.In the United Kingdom, ‘champagne’ is used exclusively to refer to sparkling wines produced in the Champagne region of France.There have been substantial sales of champagne for over 200 years, reflecting the significant goodwill that the Complainant has built up in the name.The Complainant has spent large sums on promoting champagne – on top of significant amounts laid out by individual producers and sellers to advertise specific brands of champagne.Over the last 45 years the Complainant has shown itself ready to take action, formally and informally, to protect and defend ‘champagne’ as an appellation of origin.The goodwill and reputation the Complainant has established are protectable and indeed the name ‘champagne’ has been protected by the English courts.Abusive Registrationa) Unfair disruption (Paragraph 3aiC of the Policy)The website at the Domain Name has not been used exclusively for the promotion and sale of champagne products: for six years it was used to redirect traffic to the Respondent’s car number plate business, to his search site or otherwise to a non-champagne website.The Respondent’s use of the name trades off the back of the Complainant’s goodwill. Effectively the Respondent is guilty of passing off.b) Confusion (Paragraph 3aii of the Policy)‘Champagne’ can only be used to describe a product or service relating exclusively to the sparkling wine coming from the Champagne district of France. Visitors attracted to the Respondent’s website by the domain name expect there to be some connection between the site and the product produced or marketed by those represented by the Complainant. They are therefore drawn in on a false promise.The Respondent’s use of the domain name means that, at the very least, Internet users will be confused into believing there is a connection between the Respondent and the Complainant.After being notified of the Complaint, the Respondent copied content directly from the Complainant’s website to the website at the Domain Name, further misleading Internet visitors.c) Pattern of registrations (Paragraph 3aiii of the Policy)The Respondent has no rights in the name ‘champagne’ and no legitimate interest in it. The registration here is part of a pattern of registrations of domain names which correspond to well-known names in which the Respondent has no apparent rights. There are at least three groupings.First, there is the total of over 1,000 <.co.uk> domain name registrations by the Respondent, ranging numerically from to and alphabetically from to . This is evidence that the Respondent must be registering names with which he has no obvious connection.Second, there are 18 registrations in particular (all ending .co.uk) corresponding to well-known names in which the Respondent has no apparent rights: blackthorns; campbells; chloe; elvispresley; fortune-500; fortune500; friends; ivy; marcos; pennys; pringle-golf; quicksave; regain; sherry; silverstonecircuit; u2; wendys; zaraThe Respondent’s explanations for half of the registrations on this list (blackthorns, zara, chloe, pennys, sherry, wendys, marcos, ivy and elvispresley) are contrived and funny. He has made no attempt to justify the registration of the other nine names on the list.Third, the Respondent has made no attempt to justify other registrations (all ending <.co.uk>) with which he has no obvious connection, including: abortionist; acupuncture; bookmaker; brandy; four-seasons; britishfireplaces; crowncopyrightd) Not a genuine offering of goods (reverse of Paragraph 4aiA of the Policy)The Respondent has not run and is not making preparations for a genuine business trading in champagne. Six years is an implausibly long time to construct a website – which still is not ready to take orders for champagne. He holds no other domain name registrations relating to champagne. Furthermore, there have been no significant sales of champagne at any time and there have been no arm’s length sales at all.The Respondent’s recent use of the website to promote champagne was after the Complaint was made to Nominet, was clearly in response to the Complaint, and should be disregarded.e) The Complainant has exclusive rights to control use of the name ‘champagne’ and the Respondent is pre-empting those rights.f) A negative inference is to be drawn from the Respondent’s silence. The Respondent made no reply to the Complainant before the Nominet proceedings, suggesting his reason for registering or using the Domain Name was not legitimate. Respondent In the Respondent’s contentions in answer to the Complaint, he accepts that the Complainant “may have” sufficient right to bring a complaint under the DRS. He denies, however, that the Domain Name is an Abusive Registration.The Respondent maintains that he has used and will use the Domain Name for an online champagne business. This business is said to be particularly focused on the sale of larger bottles of champagne.In support of that contention, the Respondent refers to, or exhibits, the following:a) A screenshot, which is said to show that a website from the Domain Name has been used to sell champagne products;b) The list of the Respondent’s <.co.uk> registrations exhibited to the Complaint, which shows that the Respondent...

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