Thursday , August 11 2022

Gorgonzola and cybersquatting: it depends

Why the Italian cheese consortium is winning some cases and losing others.

Picture of Gorgonzola cheese

The owner of Gorgonzola.blue lost its domain in a UDRP.

A World Intellectual Property Organization panelist has ordered the domain name gorgonzola.blue to be transferred to Consorzio per la Tutela del Formaggio Gorgonzola.

Consorzio per la Tutela del Formaggio Gorgonzola is the consortium in Italy tasked with controlling the use of the name Gorgonzola for cheese.

It has filed eight UDRP cases against domains with Gorgonzola as the second level domain.

It won the transfer of gorgonzola.best, and withdrew cases for .xyz, .fun, .agency, and .info.

It lost cases against gorgonzola.club and gorgonzola.city.

So why is it winning some cases and losing others? There’s a bit of nuance.

The domain owner in the .club decision was in the U.S., and the panel noted that the consortium didn’t show that Gorgonzola was a trademark there.

In the .city case, Digital Town registered the domain as part of a collection of .city domains, so it was clear the domain referred to the Italian city, not the cheese.

(Digital Town later let the domain expire, and the consortium didn’t pick it up, so it’s available for registration. It makes you wonder why a company would pay thousands of dollars for a UDRP but fail to register its domains in other available extensions. Also available: .shop, .co, .buzz, .FYI, and dozens/hundreds of others. It appears the consortium hasn’t even chosen to use Donuts’ string blocking service.)

The registrant in the .blue case is based in Ireland. Gorgonzola.blue pointed the domain to a parked page with ads related to cheese. Thus, the panel found it was registered in bad faith and ordered it transferred to the consortium.

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