Gallo proves strength of mark with domain name transfer

International

In E & J Gallo Winery v Angel Albanes, Gallo, the US owner and exclusive user of the GALLO brand, won the transfer of the domain name 'gallo.us' in the face of Albanes's claims that 'gallo' is a generic and non-exclusive term, meaning 'rooster' in Spanish.

Gallo established that it owns trademark registrations for the mark GALLO around the world. Citing US federal court decisions, prior World Intellectual Property Organization decisions in other domain name challenges, and even a decision of a court in the Philippines, National Arbitration Forum panellist Charles McCotter found the GALLO mark famous worldwide.

Rejecting as self-serving the claim that Albanes intended only to use the domain name 'gallo.us' descriptively for a Hispanic newsletter on "awakening issues", McCotter noted the register's automatic placement of the domain name on a parking page with a wine directory without any apparent objection by Albanes. Coupled with at least constructive knowledge of Gallo's pre-existing registered trademark rights, this action served as evidence of bad-faith use and registration of the domain name sufficient to warrant its transfer.

Rochelle D Alpert, Brobeck Phleger & Harrison LLP, San Francisco

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