Campofrio Group: big brands do not always win

During these hard quarantine days, when important dates cannot be celebrated as they deserve, we cannot ignore that two days ago was the International Day of our beloved Intellectual Property. Therefore, we believe it appropriate to analyse a recent decision issued by the World Intellectual Property Organization (hereinafter, WIPO) on April 15, 2020.

This decision, issued on a Uniform Domain Name Dispute Resolution Policy (hereinafter, UDRP Proceeding) scenario, refusing a request to have a disputed domain name transfer, has certainly surprised us.

Proceedings began with a complaint filed by one of Spain´s most reputed food industry companies, CAMPOFRÍO FOOD GROUP, S.A., -holder of the well-known trademark “CAMPOFRIO”-, in which it requested the domain name , previously registered by a private individual, to be transferred to its ownership.

Under the Uniform Domain Name Dispute Resolution Policy Rules (UDRP) (the “Rules”), in order to succeed in such a proceeding, the complainant must prove the following arguments:

1. The domain name is identical or can be easily confused with the complainant ´s trademarks, being there a significant likelihood of confusion and/or association between the domain name and the complainant ´s trademark registration.

2. The domain owner has no rights or legitimate interests in the term “CAMPOFRIO”, or in the disputed domain name, since it has no trademark or registration under the term CAMPOFRIO.
3. The domain name has been registered and used in bad faith, (e.g. has no content on a website) and said domain name “happens to be” identical to a notorious trademark.

On the one hand, the fact that the domain name campofrío.com was identical to the complainant’s trademarks became obvious to the expert examining the case. Thus, the first requirement was met.

However, the WIPO expert did not agree with the complainant on the second and third points, choosing not to make any comments regarding the second requirement. Moreover, she surprised us all by deciding not to follow previous decisions issued by that body with respect to the Defendant, all of them requiring him to transfer disputed domain names that he had acquired (with the clear intention to sell them to companies with a legitimate interest in them) to the complainants.

The expert pointed out the identity between the domain name and the trademark rights held by CAMPOFRÍO, as well as its well-known character, but did not find evidence of bad faith in the domain name registration and later use, mainly for two reasons:

1. The domain name started, one and a half years after the first complaints of CAMPOFRÍO, began to offer information on its website related to Campofrío, a small town in the province of Huelva (Andalucía). Its content did not pose any risk of confusion or association with the complainant´s activity, due to the lack of relationship with the food industry.
2. The complainant was not able to prove that, at the time of disputed domain name registration, on November 1999, the CAMPOFRIO trademark was so well-known that the domain name applicant was necessarily aware of it.

As a consequence, the WIPO expert has decided to deny the domain name transfer request, as the website posted on said domain name has had the same purpose and existence for over twenty years, which does not consist of obtaining financial profits. Furthermore, its content differs completely from the complainant´s activity, so that bad faith must be ruled out of the equation.

We are dealing with one of the exceptions that confirm the rule that the owners of well-known trademarks always win in this type of proceedings.

Therefore, we are dealing with one of the exceptions that confirm the rule; namely that well-known trademarks owners always win in this kind of proceedings. Proving bad faith is essential, since even in cases such as this, where domain names are identical to trademark registrations, registration and use can prove to be made in good faith and be fully legitimate.