Australian wine maker wins twice
Two decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) in favour of Orlando Wyndham Group Pty Limited reinforce the efficacy of the UDRP in protecting against the registration of well-known marks as domain names, particularly where the respondent has a history of cybersquatting.
Orlando is the producer of well-known Australian wines, including the Jacob's Creek range. It filed two complaints under the UDRP against different respondents in respect of the domain names 'jacobscreek.com' (registered by a Belize national named Jacob Creek) and 'orlandowyndham.com' (registered by Australian company Resource Capital Australia Pty Limited). To succeed with its complaints, Orlando had to prove, in each case, that:
- the domain name is identical or confusingly similar to a trademark or service mark in which it has rights;
- the respondent had no rights or legitimate interests in respect of the domain name; and
- the domain name had been registered and was being used in bad faith.
In both cases, decided by panellist Ian Barker, the first element was proved as Orlando provided evidence that it had registered JACOB'S CREEK and ORLANDO WYNDHAM as trademarks.
In 'jacobscreek.com', because Creek failed to submit a response, Orlando was unable to discover any evidence of Creek's use or intention to use the domain name in connection with a legitimate offering of goods or services. However, in succeeding in its argument regarding bad faith, Orlando relied on a previous UDRP case to show Creek has a history of registering famous wine-related trademarks. Barker also noted that although the Jacob's Creek range is not exported to Belize, the JACOB'S CREEK mark is highly distinctive and relates to a wine readily available in many countries.
In 'orlandowyndham.com', Resources Capital tried to rely on its New South Wales registered business name 'Orlando Wyndham Australia' to argue that it had a legitimate interest in the disputed domain name. It also submitted evidence that it was planning to utilize the domain name in relation to a "non-commercial" wine portal.
Despite this, Barker held that Resources Capital must have known of Orlando's distinctive name and reputation at the time of registration. He also found significant evidence that the company has a history of registering famous wine-related marks.
These two cases highlight the benefit to UDRP complainants of conducting WHOIS and UDRP searches to determine if the respondent has a pattern of registering famous marks as domain names.
Alistair Payne and Ravi Mohindra, Corrs Chambers Westgarth, Sydney
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