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The present proceedings – Syndicat des Vins Côtes de Provence v. Pascal Leemann-Pluot – Case No. D2024-5223 – concern the domain name <cotesdeprovence.com>, registered on January 29, 2007 by the Respondent, an individual domiciled in the United States. The Complainant, Syndicat des Vins Côtes de Provence, considered that this domain name infringed its rights, in particular its French trademarks and its Côtes de Provence appellation protected by French and European regulations.

Background and Position of the Complainant

• Appellation and missions of the Syndicate

The Complainant is a trade association created in 1933 to defend and promote the “Côtes de Provence” appellation d’origine contrôlée (AOC), which designates a geographical wine-growing area covering several communes in the Provence region. It emphasizes its high profile, its substantial production (more than 130 million bottles in 2022), as well as its trademarks registered in France.

• Trademarks claimed

The Complainant relies mainly on two French trademarks:

1. A purely figurative trademark (no. 1432164) representing a bottle of wine (without any relevant textual element).
2. A semi-figurative trademark (no. 3753570) including the words “SYNDICAT DES VINS COTES DE PROVENCE”.
3. He also emphasizes that he is the holder of several domain names containing the expression “cotesdeprovence”, such as <cotesdeprovence.fr>, <odg-cotesdeprovence.fr> or <odg-cotesdeprovence.com>.

• Arguments about similarity and confusion

The Complainant considers that the domain name <cotesdeprovence.com> reproduces identically the essential element of its signs, namely “COTES DE PROVENCE”. Despite the semi-figurative form of its trademark, it considers that the dominant verbal element is “Côtes de Provence” and that there is therefore a likelihood of confusion.

• Rights and legitimate interests

The Complainant claims that the Defendant has not been authorized to use the appellation or to register a domain name corresponding to its trademarks or its AOC/PDO. It adds that the use of the site associated with the domain name (pages of pay-per-click advertising links related to the sale or delivery of wine) does not constitute legitimate or bona fide use.

• Registration and use in bad faith

The Complainant maintains that the expression “Côtes de Provence” enjoys a strong reputation and that it is unlikely that the Defendant was unaware of the existence of the AOC and related rights. The association of the domain name with a site of sponsored links targeting the wine estate would demonstrate a desire to profit from the reputation of the appellation and to create confusion among Internet users, which would characterize bad faith.

Defendant’s position

The Respondent did not participate in the proceedings and did not submit any arguments in response. The only information available is that provided by the Complainant and the Center’s findings, in particular that the site linked to the domain name displayed PPC links relating to wine and that no active use by the Respondent (such as its own commercial site) has been proven.

Panel Analysis

3. a) Similarity between the domain name and the trademarks

• The Panel notes that the Complainant’s entirely figurative trademark (no. 1432164) does not include a word element, and therefore cannot be compared textually to the domain name <cotesdeprovence.com>.
• The second trademark (no. 3753570), registered in 2010 (i.e. after the registration of the domain name in 2007), includes the element “SYNDICAT DES VINS COTES DE PROVENCE”, but is not strictly equivalent to “COTES DE PROVENCE” alone. The Panel recognizes that the Complainant considers it to include a dominant element “Côtes de Provence”, but notes the absence of concrete evidence to demonstrate that this verbal segment would be protected in isolation or considered the pre-eminent part of the trademark.

1. b) Rights or legitimate interests of the Respondent

In view of the Panel’s conclusion on bad faith (see below), it was not considered necessary to make a final decision on the question of legitimate rights or interests. In accordance with the UDRP procedure, failure to prove bad faith of registration and use is sufficient to reject the complaint, without it being mandatory to analyze the second element.

1. c) Registration and use in bad faith

• Priority of the trademark over the domain name

The semi-figurative trademark mentioning “Côtes de Provence” dates from 2010, while the domain name was registered in 2007, which makes it unlikely that there was an initial intention to specifically target the Complainant’s trademark.

• Reputation of the Complainant vs. reputation of the wine region

Even if the appellation “Côtes de Provence” is recognized in the wine sector, the Panel notes that the Complainant’s argument does not prove that the Respondent was aware of the syndicate or its trademarks in order to exploit their reputation. It is plausible that the Defendant wanted to capitalize on the interest in the region or the “Côtes de Provence” wine, without necessarily targeting the owner of the trademarks or the organization managing the AOC.

• Advertising links (pay-per-click)

The advertising content of the site is focused on the theme of wine, but does not in itself demonstrate the intention to exploit the Complainant’s trademark. To characterize bad faith, it would have been necessary to establish that the Defendant was aware of the Syndicate and its rights or that it was specifically targeting the trademark.

• Panel’s conclusion

Not being able to find any evidence proving a deliberate intention to appropriate the reputation of the Syndicate or its brands, and noting moreover that the registration predates the semi-figurative trademark, the Panel finds that the Complainant does not fulfill the condition of bad faith within the meaning of the UDRP Policy.

Decision

In the absence of sufficient evidence of bad faith in the registration and use of the domain name, the complaint is rejected. The domain name <cotesdeprovence.com> therefore remains in the possession of the Respondent.

Conclusion

The Panel, applying the rules of the UDRP, concludes that the Complainant does not meet the requirement to establish bad faith registration and use by the Respondent. Accordingly, the complaint is dismissed.

The UDRP aims to resolve conflicts between trademarks and domain names, not between geographical indications and domain names. In this case, in the absence of a similar trademark and proof of bad faith on the part of the domain name holder, the outcome of this decision is in accordance with the UDRP rules.

This decision highlights the importance of owning a trademark to effectively defend one’s interests when faced with the registration of a domain name.

The Côtes de Provence Wine Syndicate has also acted, this time successfully, via the French administrative procedure PARL-EXPERT to recover the same domain name in <.fr>: add link.

Dreyfus Law Firm, with its expertise in intellectual property and domain name protection, assists its clients in defending their rights against the risks of cybersquatting and infringement of their IP rights. We act in UDRP disputes, analyzing each case from the perspective of trademark law and regulations specific to protected geographical indications (PGI) and controlled designation of origin (CDO). Thanks to our experience in the strategic management of domain name portfolios, we implement tailored solutions to anticipate, monitor and defend the digital assets of our clients, whether they are producers, professional associations or companies in the wine and food industry.

FAQ

1. What is the UDRP procedure and when is it applicable?

The UDRP (Uniform Domain Name Dispute Resolution Policy) procedure is a mechanism set up by ICANN to resolve domain name disputes. It applies when the complainant considers that a domain name is identical or similar to a trademark that they hold, that the defendant has no right or legitimate interest in the domain and that they have registered and are using the domain in bad faith.

2. Can a domain name containing a protected designation of origin (PDO) be recovered?

The protection of designations of origin is governed by specific regulations (French and European, for example). However, the UDRP generally only recognizes rights related to trademarks. It may therefore be more difficult to claim a domain name on this basis alone. Legal action based on PDO or unfair competition laws could be an alternative.

3. Can a semi-figurative trademark be sufficient to obtain a domain name via the UDRP?

It all depends on the textual elements of the trademark. If the domain name in question only includes part of a semi-figurative trademark, the chances of success may be reduced, especially if this part is not clearly identified as dominant.

4. Can a domain name registered before a trademark be recovered under the UDRP?

As a general rule, if the domain name was registered before the trademark claimed by the complainant, it is difficult to prove bad faith. However, there are some exceptions, particularly if the defendant was already aware of the trademark and intended to exploit it abusively.

5. Is the display of advertising links (pay-per-click) on a site proof of bad faith?

Not necessarily. Although some cases of cybersquatting are characterized by the exploitation of a domain name for sponsored links, bad faith must be demonstrated. If the domain contains a generic or geographical term and the defendant does not specifically target a trademark, it may be difficult to prove abusive use.

6. Can a right to a designation of origin be invoked if it is well known?

The reputation of an appellation of origin can be a factor, but it does not automatically confer a right under the UDRP. As the procedure is trademark-oriented, it is often preferable to resort to actions based on the specific regulations of appellations or on the law of unfair competition.

7. What can be done if a UDRP complaint is rejected?

If a UDRP complaint is rejected, other options exist:

• Legal action: depending on the country, it may be possible to invoke trademark law, appellation of origin law or unfair competition law.
• Negotiation: an amicable approach can be attempted with the domain holder.
• Monitoring and future actions: monitor possible new uses of the domain and intervene if misuse is detected.

8. How can a name associated with a designation of origin be effectively protected?

• Register a word mark including the designation as soon as possible.
• Register the relevant domain names before a third party does.
• Actively monitor domain registrations and online uses.
• Act quickly in the event of a disputed registration, via a UDRP procedure or legal action. 

Dreyfus Law Firm works in partnership with a global network of lawyers specializing in intellectual property. 

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In today’s interconnected digital economy, domain names have become invaluable assets for businesses, serving as critical elements of their online identity and branding efforts. However, cybersquatting, the unauthorized registration of domain names, presents significant obstacles for brand protection. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) offers a mechanism to address such disputes, but its applicability varies, especially concerning country code Top-Level Domains (ccTLDs). This article provides a comprehensive overview of the UDRP’s relationship with ccTLDs and offers actionable advice for reclaiming local domain names.

Understanding the UDRP and Its Application to ccTLDs

The UDRP, established by the Internet Corporation for Assigned Names and Numbers (ICANN), provides a streamlined process for resolving disputes related to the bad-faith registration of domain names. While the UDRP is universally applicable to generic Top-Level Domains (gTLDs) such as .com, .net, and .org, its application to ccTLDs is inconsistent.

Each ccTLD registry operates independently, and the adoption of the UDRP or a variant thereof is at the discretion of the individual registry. For instance, the World Intellectual Property Organization (WIPO) administers dispute resolution services for numerous ccTLDs that have adopted the UDRP or its variants. Businesses must research and understand the rules applicable to their target ccTLD.

Key Considerations for Reclaiming Local Domain Names

1. Registry Policies: Before initiating a claim, confirm whether the ccTLD registry adheres to the UDRP or an equivalent dispute resolution procedure. This information is often available on the registry’s official website or via WIPO’s online resources.
2. Eligibility Criteria: To succeed under the UDRP, you must establish the following cumulative conditions:

• The domain name is identical or confusingly similar to your trademark.
• The registrant has no legitimate interests in the domain name.
• The domain was registered and is being used in bad faith.

Trademark rights, even those unregistered in some jurisdictions, play a crucial role in demonstrating your case.

1. Procedural Variations: Be aware that while some ccTLDs have adopted the UDRP in its entirety, others may have tailored processes with specific submission requirements, timelines, and fees. Familiarize yourself with the specific procedures and requirements of the relevant ccTLD.

Steps to Initiate a Domain Dispute Under the UDRP

1. Preparation: Gather evidence supporting your claim, including proof of trademark rights, instances of the domain’s bad-faith use, and any correspondence with the registrant.
2. Filing the Complaint: Submit a formal complaint to an accredited dispute resolution provider, such as WIPO or the Forum. The complaint should detail the basis of the dispute and the relief sought, typically the transfer of the domain name.
3. Administrative Proceedings: Once the complaint is filed and accepted, the registrant will be notified and given the opportunity to respond. A panel of experts will evaluate submissions from both parties and issue a decision, often within 60 days.
4. Implementation of Decision: If the decision favors the complainant, the domain name will be transferred after a brief period, provided no court action is initiated by the registrant.

Conclusion

Recovering a ccTLD domain name registered in bad faith requires not only a strong understanding of the UDRP but also the nuances of local registry rules. By diligently preparing your case, navigating registry-specific procedures, and engaging experienced professionals, you can effectively reclaim domain names that align with your trademark rights.

At Dreyfus Law Firm, we specialize in navigating the complexities of domain name disputes across various jurisdictions. Our partnership with a global network of attorneys specializing in Intellectual Property ensures that we provide comprehensive and effective solutions tailored to your needs.

FAQ 

What is a country code top-level domain (ccTLD)?

A country code top-level domain (ccTLD) is a two-letter domain extension assigned to a specific country or territory, based on ISO 3166-1 country codes. Examples include .fr for France, .de for Germany, and .uk for the United Kingdom. These domains are generally managed by national organizations and may have specific registration requirements.

What is the EU country code top-level domain?

The ccTLD for the European Union is .eu. It is managed by EURid (European Registry for Internet Domains) and is available to businesses, organizations, and individuals residing in the EU or the European Economic Area (EEA).

What country code top-level domain is France?

France’s ccTLD is .fr. It is administered by AFNIC (Association Française pour le Nommage Internet en Coopération). Registrants must meet certain residency or business presence requirements in France.

Can anyone use country domains?

Not necessarily. The eligibility to register a ccTLD varies by country:

• Open ccTLDs: Some, like .co (Colombia) and .io (British Indian Ocean Territory), are widely available for international use.
• Restricted ccTLDs: Others, like .fr (France), .us (United States), and .ca (Canada), require a local presence or a registered business in the respective country.
  Always check the registration policies of the ccTLD before attempting to register.

What is the difference between a TLD and a ccTLD?

A TLD (Top-Level Domain) is the highest level in the domain name system (DNS). TLDs are divided into two categories:

• gTLDs (Generic Top-Level Domains): These are not country-specific and include .com, .org, .net, .info, and .shop.
• ccTLDs (Country Code Top-Level Domains): These are assigned to specific countries or territories, such as .fr, .uk, .de, .jp.
  While gTLDs are generally open for global registration, ccTLDs may have specific rules restricting their use to residents or businesses within a country.

Partner with us to safeguard your digital assets across jurisdictions.

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The digital landscape has undergone significant transformations with the introduction of new generic Top-Level Domains (gTLDs). This expansion presents both opportunities and challenges, particularly concerning the Uniform Domain-Name Dispute-Resolution Policy (UDRP). As experts in intellectual property law, we aim to elucidate the complexities that brand owners face in navigating the UDRP amidst the proliferation of new gTLDs. This article will provide an overview of the UDRP procedure, discuss the implications of new gTLDs, and explore how brand owners can adapt their strategies to address these challenges.

Understanding the UDRP: A Framework for Resolving Domain Disputes

Definition and Purpose

Established in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP provides a streamlined mechanism for resolving disputes related to domain names. Its primary objective is to address cases where domain names are registered and used in bad faith, infringing upon trademark rights.

Key Criteria for Filing a Complaint

To initiate a UDRP proceeding, a complainant must demonstrate that:

• The disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
• The respondent has no rights or legitimate interests in respect of the domain name.
• The domain name has been registered and is being used in bad faith.

These criteria ensure that the UDRP targets clear cases of abusive domain name registrations.

The Impact of New gTLDs on the Domain Landscape

Expansion of the Domain Name System

In 2012, ICANN launched the New gTLD Program, significantly expanding the number of available gTLDs beyond the traditional ones like <.com>, <.org>, and <.net>. This initiative introduced a plethora of new extensions, such as <.shop>, <.tech>, and <.paris>, aiming to enhance consumer choice and foster competition. For instance, <.shop> has been widely adopted by e-commerce businesses, while <.tech> has gained traction among technology companies.

Opportunities and Risks for Brand Owners

While new gTLDs offer brand owners the chance to secure domain names that align closely with their trademarks and industries, they also pose increased risks of cybersquatting. The vast array of new extensions provides malicious actors with more avenues to register domain names that infringe upon established trademarks.

Challenges Posed by New gTLDs to the UDRP

Increased Potential for Cybersquatting

The surge in gTLDs has led to a corresponding rise in cybersquatting incidents. According to the World Intellectual Property Organization (WIPO), there has been a notable increase in UDRP cases, with a record number of complaints filed in recent years. WIPO reported a 20% increase in UDRP cases filed between 2015 and 2020, demonstrating the growing impact of cybersquatting in the era of new gTLDs.

Complexity in Brand Protection Strategies

Brand owners now face the daunting task of monitoring and protecting their trademarks across a vastly expanded domain landscape. This complexity necessitates more comprehensive surveillance and enforcement strategies to safeguard intellectual property effectively.

Jurisdictional and Procedural Issues

The introduction of numerous gTLDs has also led to jurisdictional challenges, as different registries may have varying policies and procedures. This fragmentation can complicate the enforcement of UDRP decisions and the overall dispute resolution process. For example, the variation in registry policies across jurisdictions, such as Europe and Asia, often creates hurdles for uniform enforcement of UDRP decisions.

Adaptations and Responses

Evolution of the UDRP Framework

In response to the evolving domain landscape, there have been discussions about reforming the UDRP to address new challenges effectively. Proposals include introducing financial penalties for cybersquatters and extending response times for respondents. However, such changes must be balanced against the need to maintain the UDRP’s efficiency and effectiveness.

Introduction of the URS Procedure

To complement the UDRP, ICANN introduced the Uniform Rapid Suspension (URS) system, designed for clear-cut cases of infringement. The URS offers a faster and more cost-effective means of suspending infringing domain names but does not provide for their transfer to the complainant.

Recommendations for Brand Owners

Given the complexities introduced by new gTLDs, brand owners should:

• Develop a robust domain name strategy that includes registering key trademarks across relevant gTLDs.
• Implement continuous monitoring to detect and address potential infringements promptly.
• Utilize mechanisms like the Trademark Clearinghouse to safeguard their rights during the launch of new gTLDs.

Brand owners should also consider employing AI-powered tools to automate the monitoring of domain name registrations across multiple gTLDs.

Conclusion

The proliferation of new gTLDs has undeniably transformed the domain name ecosystem, presenting both opportunities and challenges for brand owners. While the UDRP remains a vital tool for combating cybersquatting, it must evolve to address the nuances introduced by the expanded gTLD space. As the domain name landscape continues to evolve, staying ahead requires not only vigilance but also an adaptable strategy that leverages legal and technological advancements.

At Dreyfus Law Firm, we offer comprehensive services to protect and enforce your domain name rights, including proactive domain name monitoring, strategic enforcement actions, UDRP complaints, and tailored solutions for brand protection in the digital space. Our expertise spans domain name recovery, litigation, and cybersecurity strategies to mitigate the risks posed by online infringement and cybersquatting.

For tailored advice on navigating the complexities of domain name protection, subscribe to our newsletter or contact Dreyfus Law Firm for expert guidance.

FAQ

How does UDRP work?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an administrative process designed to resolve disputes over domain names that have been registered in bad faith. Complainants must demonstrate that:

• The disputed domain name is identical or confusingly similar to their trademark.
• The domain holder has no legitimate rights or interests in the name.
• The domain name was registered and is being used in bad faith. Decisions under the UDRP are made by dispute resolution providers, such as WIPO, and can result in the transfer or cancellation of the domain.

What are the grounds for a domain name dispute?

A domain name dispute arises when a domain name is alleged to have been registered in bad faith, infringing upon trademark rights. Under the UDRP, the cumulative  grounds for a complaint are:

• The domain name is identical or confusingly similar to a trademark owned by the complainant.
• The domain registrant has no legitimate rights or interests in the domain name.
• The domain name was registered and is being used in bad faith, such as for cybersquatting or phishing.

What is UDRP top-level domains?

UDRP applies to generic Top-Level Domains (gTLDs) such as <.com>, <.org>, <.net>, and to new gTLDs like .shop and .tech, as well as country-code Top-Level Domains (ccTLDs) that have voluntarily adopted the UDRP framework.

What are examples of gTLDs?

Examples of traditional gTLDs include:

• .com
• .org
• .net
• .info
• .biz

New gTLDs introduced under the ICANN expansion program include:

• .shop
• .tech
• .law
• .paris
• .bank

Dreyfus Law Firm is partnered with a global network of attorneys specializing in Intellectual Property.

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