NOT SUCH FINE CHEESE

The IPKat is grateful to Jim Davies for drawing his attention to the Nominet UK Dispute Resolution Service’s decision concerning the finecheeses.co.uk domain name.

The Fine Cheese Company are artisan cheese selectors and maturers. They began trading under this name in 1987, and began trading on the web in 1999. In 2000 they started an online ordering service from that site. Lawson’s Cheeses also sells cheeses. They were the holders of the finecheeses.co.uk domain name [with the addition on an ‘s’ after the word ‘cheese’]. The Fine Cheese Company adduced evidence that this had led to customer confusion and argued that Lawson’s Cheeses’ registration was abusive and designed to exploit their name and reputation.

The Nominet Expert was easily convinced that the Fine Cheese Company had had rights in respect of a name or mark identical or similar to the domain name thanks to the fact that they had traded under the name.

He also didn’t give the Fine Cheese Company a rough ride in finding that Lawson’s Cheeses’ registration was a blocking registration for the purposes of s.3iB of the Policy since it led to a site offering goods which were very similar to those offered by the Fine Cheese Company.

Most worrying though is the Expert’s approach to genericity. Said the expert:

"The Expert has considered the question of the possible generic nature of the Domain Name; whilst it is true that the Domain Name is descriptive of the products sold by both the Complainant and the Respondent, the Expert considers that the Domain Name has acquired secondary meaning due to the activities of the Complainant. Indeed a Google Search for “Fine Cheese” discloses only the Complainant (and not the Respondent) and includes recommendations from such culinary worthies as Delia Smith. A search for “fine cheeses” provides a similar result".

The IPKat says that the Expert has mashed together genericity and descriptiveness and more worryingly, has taken no account of the need to keep certain terms free for other traders to use. The IPKat also thinks that it’s not a good idea to pay too much attention to Google ratings in judging secondary meaning, since it’s possible to pay to up one’s Google rating (even though there’s no suggestion that this happened in this case).