The “Consorzio per la Tutela del Formaggio Gorgonzola” just filed a UDRP on the domain name Gorgonzola.xyz
Gorgonzola of course is a cheese, and Consorzio per la Tutela del Formaggio Gorgonzola translates to “Consortium for the Protection of the Gorgonzola Cheese” yes seriously and they own the domain name Gorgonzola.com.
Its pretty amazing how much you learn writing a blog:
“Following the Stresa meeting of all major European experts in the dairy sector, an agreement was entered into on 1st June 1951 for the protection of the most important and typical European dairy products. The Italian Parliament approved the Law No. 125 on the protection of designations of origin and typicality of main Italian cheeses on 10 April 1954. The following year, precisely on 30 October 1955, Parmigiano-Reggiano, Grana-Padano, Gorgonzola, Pecorino Romano, Fontina, and Pecorino Siciliano designations of origin were officially acknowledged by the Italian Decree D.P.R. 1269”
A lot of people are chatting about the value of .XYZ domain names and here we have an organization dedicated to “protection of Gorgonzola cheese” (there’s something I never thought I would write) who is spending somewhere around $5K in filing and legal fees in an attempt to get the domain name Gorgonzola.xyz.
Now here is the really interesting part.
This is the first and only UDRP filed by the cheese protectors or on the word “Gorgonzola” although Gorgonzola.net and gorgonzola.info are parked and Gorgonzola.org is owned by a third-party.
The group does own the domain name Gorgonzola.it the ccTLD for Italy
The domain name Gorgonzola.xyz was just registered in August and does not resolve.
Wonder what provoked the ire of the Gorgonzola folks in this instance … Did the .XYZ owner perhaps contact them asking for a large price, while the owners of other Gorgonzola domains hadn’t?
Curious whether a cheese name can be protected to this extent. In any case, there are now hundreds of suffixes to beat over the heads like pop-up gophers. If they’re dedicated to the purity of the term “Gorgonzola”, terrific. But chasing every possible “Gorgonzola” domain is a losing strategy.
Would any consumer really believe .XYZ represented the authentic, authoritative, elite version of anything – cheese or non-cheese? No, hardly.
the word itself.
this is a huge industry in Northern Italy. Even certain geo terms could trigger their fury and it is close
to impossible to prove them wrong as they actually have valid historical claims based on dialects and languages, one could argue that they would be eligible to file an udrp against wipo.com;
( they are best friends with the folks that opposed .vin )
they generate more money than the NHL. cheese is no joke.
This is just cheesy. Designation of origin protection applies to actual cheeses, not domains. But who would defend an .XYZ, so this might set a UDRP precedent against other TLDs in the future. Saluti.
@Acro,
That’s a good point. I wonder if the registrant will bother to defend his domain. Many domainers might view lower valued nTLD domains as not worth the trouble – especially since they tend to be owned by newer, less well funded domainers and owned for such a short time that there’s often little psychological attachment. In that event, trademark holders might begin filing UDRPs against nTLD domains more aggressively, anticipating less resistance.
Wouldn’t know how to advise the registrant. On the 1 hand, I don’t see him as cybersquatting; so I’d like to see him prevail, and his chances are better if he pays for a lawyer and a full UDRP panel. On the other hand, the domain is probably worth little or nothing; so I couldn’t in good conscience tell him to spend thousands of dollars and lots of time fighting over a moldy scrap of Gorgonzola rind.
Exactly. But I see there is a European trademark as of 2012: https://tmdb.eu/trademark/010595015/eu/gorgonzola
If the domain in question were the .com I’d foresee a hard battle, but in this case maybe Verisign can use the .XYZ to its advantage. 😀
Oops. Small detail: it’s a figurative mark for the stylized “g” and its description. So there is no wordmark for “gorgonzola” per se. Mike, do you concur? 😀
Besides being a designation of origin, protected by Italian and EU laws, the term “Gorgonzola” is, in various ways and forms, a TM in some countries.
And it’s their interest to protect the use of this word/brand, which has no other meaning apart being a well-known cheese and a location in Italy, near Milan.
It’s basically a word which directly and immediately identifies a product.
@Joseph (“Curious whether a cheese name can be protected to this extent.”): this legal protection is necessary to avoid food counterfeiting and protect consumers from fake products, typically manufactured in other countries. Did you know, for ex., that Parmigiano Reggiano (called Parmesan cheese: http://www.wipo.int/ipadvantage/en/details.jsp?id=3664) is one of the most counterfeited cheese in the US? and we are talking of 1 bln USD in value … : http://www.forbes.com/sites/larryolmsted/2012/11/19/the-dark-side-of-parmesan-cheese-what-you-dont-know-might-hurt-you/
I’m surprised they are not getting after the owners of the .net (guess who we have here 🙂 hello Frank!), org, etc … but never say never … 😉
P.S. Personally I don’t like Gorgonzola … but Parmigiano is great! 🙂
@Andrea,
We can make a distinction between (A) going after counterfeit Gorgonzola cheese and (b) going after domains that happen to use the word “Gorgonzola”.
Yes, it’s a region. Yes, it’s a cheese. So why can’t an entrepreneur name his company after a region (say, Patagonia clothing) or a cheese (say, Cheddar apps)?
@ Joseph:
Those are two different levels and areas of protection.
I assume you know how denomination of origin protection and TM laws work.
Sure, you can name a company/product “Gorgonzola”, unless you plan to sell Gorgonzola cheese, because this is a protected term in this specific class of products.
You can use this term for your company/products/services in classes where protection has not been granted.
For ex. Bristol-Myers had a TM on this term, but for a different class of products (Class 5), they were selling vitamins, not cheese.
If you own a domain related to the term “Gorgonzola” it’s advised, just to use a euphemism, not to show ads related to the cheese … and well, IMHO food counterfeiting can also be seen in domains redirecting and/or promoting fake cheese …
Gorgonzola is not a region, is a little town near Milan, where the manufacturing of this cheese probably started in the 15th century and it’s where the cheese name comes from.
@Andrea,
Then we’re in agreement. “Gorgonzola” can legitimately be used for something other than Gorgonzola cheese, despite its having “no other meaning”. (Towns are regions, as I use the term.)
There have already been a bunch of appellation of origin cases, with predictably mixed results:
D2000-0629 parmaham.com
Complaint denied
D2003-0661 parmigiano.org
Transfer
D2004-0300 parmalatte.com
Transfer
D2004-0350 spumanteasti.net
Transfer
D2004-0355 astispumante.info
Transfer
DCO2011-0026 champagne.co
Complaint denied
Blessed are the cheesemakers.
any manufacturers of dairy products
Joseph
I believe Mr. Berryhill was quoting from the great British Count “the Monty of Python”
@Mike,
So was I.
Interesting that the drug maker Bristol-Myers had a US trademark for this term: GORGONZOLA and a very disturbing description:
Design :Grotesque men formed by letters, numbers, punctuation or geometric shapes; Stick figures
Mike, that TM was cancelled more than 30 years ago 🙂
Word Mark GORGONZOLA
Goods and Services (CANCELLED) IC 005. US 018. G & S: VITAMINS. FIRST USE: 19720512. FIRST USE IN COMMERCE: 19720512
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 02.01.33 – Grotesque men formed by letters, numbers, punctuation or geometric shapes; Stick figures
04.05.25 – Other mythological or legendary animals
Serial Number 73066049
Filing Date October 16, 1975
Current Basis 1A
Original Filing Basis 1A
Registration Number 1054924
Registration Date December 28, 1976
Owner (REGISTRANT) Bristol-Myers Company UNKNOWN New York NEW YORK
(LAST LISTED OWNER) BRISTOL-MYERS COMPANY CORPORATION DELAWARE 345 PARK AVE. NEW YORK, N.Y. 10022 NEW YORK NEW YORK 10022
Prior Registrations 0981853
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Cancellation Date May 24, 1983
Author, Nobody owns domain names.
@CBNO,
While you’re lecturing Mike Berkens, please enlighten the rest of us! What verb should professionals in this industry be using to make the pedants happy?
Defending a domain against FIFA, the Olympics COI, Old European Cheese&Licquor mentioned
in historical documents older than eletricity and the Formula 1 brats is seriously unwise unless
you can afford to buy them. it is sad. John Oliver is trying.
@Joseph you would have a valid argument except you forgot to research beyond the English language.
look up the Italian dialect Romagnolo and you will see that certain geographical ( towns included ) nominations were ‘named’ after non-generic terms that are still in use in many places, hence you have a clash.
The more venerable the etymological pedigree, the less persuasive the argument. We can trace words back centuries, even millennia. Many terms that were once proper nouns have been disseminated across linguistic barriers and become generic words.
A recently filed trademark carries more weight as IP than the ancient origin of a town name that became a cheese name.
the danger about you using latin-rooted expressions without actually knowing latin will embarass you if you were to look up the huge false-coagnate you just implied.
or you actually meant to be offensive ?
@SalvatonicaDiBondenoEM,
In order to embarrass someone, you must – at a minimum – communicate your idea to another human being. I’m afraid your last comment reads as gibberish in English.
I’m starting to believe you actually harassed a lady trying to buy a domain.
Apologies on my English, it is my 7th language. but I shouldn’t have said that because you probably speak 15 languages do you not.
you need help my friend.
@SalvatonicaDiBondenoEM,
I do need help. Someone please help me understand what this Salvatonica fellow is trying to say! He speaks 15 languages. If we all collaborate, relying on our own meager skills, and line up a series of translators between him and English, going through all 14 tongues from this Tower of Babel, that gives us – let’s see – 14! = 87,178,291,200 different permutations. Surely 1 of those 81 billion sequences will unscramble yesterday’s message!
Perhaps this is the skeleton key: Romagnolo-to-Cantonese-to-Swahili-to-Provençal-to-Hungarian-to-Pashto-to-Ancient Greek-to-Navajo-to-Afrikaans-to-Swiss German-to-Aramaic-to-Old Norse-to-Japanese-to-Nahuatl-to-English. Let’s try!
Yes, I’m poking fun. Not sure why you decided to go after me several messages ago … unless you simply can’t handle being disagreed with. At any rate, you’ve become rather nasty; so I feel entitled to laugh at you if nothing else.
Nobody but you has ever claimed that I harassed any lady. When the VP of DomainNameSales banned me for questioning his right to meddle in negotiations, dictate phrasing, make threats, and take sides against a customer, the excuse he used was that I had said something “rude”. What I said was “Listen, Lady” in a third email (after 2 very polite messages). Most people would consider that firm but not rude. Nobody, however thin skinned, has ever fainted from shock at the sound of “Listen, lady”. She was emailing me repeatedly with her $21 offer, and I wasn’t interested; so it was I on the harassed side of things.
Thanks, Salvatonica, for giving me another chance to complain about DomainNameSales. Wouldn’t have brought it up, but you sounded interested.
So are we in agreement that the filer of this UDRP has no wordmark for “gorgonzola” but merely a stylized mark? Mike? 😀
Would that be sufficient, along with the weight of the industry they obviously represent to get the panel to order the transfer?
Don’t discount an expected failure by the registrant to respond.