DigitalTown won a UDRP complaint for the domain name Gorgonzola.City.
The complaint was made by Consorzio per la Tutela del Formaggio Gorgonzola of Novara. That is an organisation that oversees the production and marketing of all gorgonzola cheese produced in the area it covers. It was established in 1968 to control the use of the denomination of origin and the GORGONZOLA trade mark in relation to gorgonzola cheese. The Complainant is the holder of trade mark registrations for CG GORGONZOLA, including European Union registration number 010595015, registered on July 4, 2012.
The organisation owns the domain name gorgonzola.com but it failed to get Gorgonzola.City in a World Intellectual Property Organization (WIPO) domain name dispute.
DigitalTown currently owns and operates more than 22,000 .CITY domains which are currently being rolled out around the world, in partnership with municipalities, destination marketing organizations, chambers of commerce, and private development partners.
DigitalTown registered the Disputed Domain Name as it corresponds to the name of a city in Italy. Gorgonzola is an Italian town of 20,042 inhabitants of the metropolitan city of Milan, in Lombardy. The town gives its name to the famous cheese Gorgonzola.
The 3-member panel denied the complaint: “Taking all of the above into account, and based on the record before it, the Panel concludes that the Respondent is using the Disputed Domain Name in a descriptive manner, rather than in order to target the Complainant’s CG GORGONZOLA mark, and that such activity provides the defense to the Respondent set out in paragraph 4(c)(i), in respect to the Disputed Domain Name.”
The .city extension seems to have helped DigitalTown prove that it was not targeting the cheese trademark but was building a tourism city network: “In this respect, use of the gTLD “.city” supports the Respondent’s position that he registered the Disputed Domain Name for use in connection with his city-based tourism business rather than to sell cheese.”
#Gorgonzola.cheese =yes
#Gorgonzola.city=NO
Smart.panels?
Overall, I believe this decision bodes well for the .CITY TLD, to the extent that registrants use the TLD in a manner that is consistent with marketing a city.
As context, to date, about a year after assembling the world’s largest .CITY domain portfolio, we have had just 2 UDRP complaints and zero cease and desist letters related to our use of .CITY domains.
For anyone interested, and for the sake of full disclosure, the next big milestones for DigitalTown coming up are:
(1) May 9-11, DigitalTown will meet with the registry operators of the new web in Madrid. In addition to existing strategic deals with .LONDON, .BOSTON, .MIAMI, .LAW and .FIT, we are finalizing strategic deals with many more registry operators. In the process, we are architecting the new web. We call it the “Smart Web” — the new online real estate of a Smart Internet, connected by a single sign on Smart Wallet.
(2) May 20-23, DigitalTown will launch the Smart.Menu platform at the National Restaurant Association convention in Chicago. Smart.Menu is a breakthrough platform that is being launched in partnership with the trade associations as a means to equip any restaurant to be a digital restaurant. The launch version of the platform also includes city directories for thousands of cities all running on .MENU. This levels the playing field against Open Table, Yelp, etc.
(3) June 12-16 at London Tech Week, we will launch Smart.London. This is a global event for us, where we will not only start the global movement but also launch the web services platform that lets independent developers build their own applications. This will done through a Hackathon. It is a cash-efficient method for us to crowdsource software innovation, very similar to how say Xbox became dominant in console gaming, or how WordPress has become the dominant content management system for building sites.
(4) July 16-19 in Nashville, we will launch Nashville.city. It is a US flagship launch. The event will be mainly at the Convention of the American Chamber of Commerce Executives. In addition to exhibiting and sponsoring we’ll host an event on July 17 starting at 5:30 pm at the iconic The Stage on Broadway, inviting the multi-stakeholder Nashville community to celebrate the opening of Nashville.city with national PR support that introduces to other cities how they can learn from Nashville’s example.
(5) August 8-10 in New York we are scheduled to be with the National Association of Bar Executives at their annual conference for the introduction of DigitalTown’s global .LAW network, a network expected to cover thousands of cities. This platform gives the State Bars a response to Avvo as they regain their role as a source of legal referrals.
In short, the SmartWeb is quickly becoming a reality. And while the “.COM Forever” folks might not love this news, the reality is that it makes intuitive sense that the web would become descriptive. ICANN should perhaps have played a larger role as architect in approving TLD application. The fact that they did not simply means that the private sector needs to self-organize around some organizing principles. I believe this is indeed happening, and I am happy for DigitalTown to play a role as enabling catalyst.