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Intellectual Property and Internet Practice - Wine Industry

Wineries have successfully used the Uniform Domain Name Dispute Resolution Policy ("UDRP") as an alternative to going to court to protect wine brands and trademarks. The registration of a domain name is just as important as protecting the wine label and winery name, and should be conducted along with trademark registration. Many consumers now look to the internet for information about wineries.  

Besides producing good wine, one of the best ways for a wine and beverage maker to succeed in the global (and regional) market is to have a strong trademark and brand identity. A good website with a recognizable domain name is another way for wineries to assist their businesses.  

Although few producers have taken steps to protect winery names on the Internet, producers now have many options to consider. Trademark owners can use the ICANN domain name arbitration process to recover domain names that may infringe on a protected trademark. Trademark owners should check to see if their desired name is available in one of the new top level domain name categories: .info, .biz, .coop (for cooperatives), .us (for United States citizens) or other country code top level domains in major wine producing nations (such as .fr for France, .cl for Chile, .nz for New Zealand, .au for Australia or .za for South Africa).  

Twenty-eight UDRP cases were filed in 2000 by winery and beverage interests. Another fifty-one cases were filed in 2001. Some of these disputes could have been avoided with proactive registration of winery domain names.

The resources available on UDRPlaw.net can also help wineries learn which cases have been filed, who has been successful, and how to protect winery marks in the future.

Be sure that when your winery name is being searched, your website and winery are being found.

• Alcohol & Beverage Cases in 2000
• Alcohol & Beverage Cases in 2001
• Alcohol & Beverage Cases in 2002
• Pending Cases
• Wine Links
• Articles

On April 3, 2002, the U.S. Court of Appeals for the Fifth Circuit found in favor of Ernest & Julio Gallo Winery against cybersquatter Spider Webs Ltd, in E. & J. Gallo Winery v. Spider Webs Ltd, 2002 U.S. App. LEXIS 5928, No. 01-20333 (5th Cir. Apr. 3, 2002) (A free copy of the decision is available on Findlaw. Further coverage can be found at SiliconValley.com).

In January 2001, Gallo became the first wine producer to win a lawsuit under the AntiCybersquatting Consumer Protection Act ("ACPA"), when it won at the district court level against Spider Webs Ltd in E.& J. Gallo Winery v. Spider Webs Ltd., 129 F. Supp. 2d 1033 (S.D. Tex. Jan. 29, 2001).

Gallo Becomes First Winery To Win an ACPA Case 

E. & J. Gallo Winery became the first wine producer to win a lawsuit under the ACPA, when Judge Marcia A. Crone granted Gallo's motion for summary judgment on January 29, 2001.

The defendants, Spider Webs Ltd., had registered ErnestandJulioGallo.com in August 1999.  Gallo brought suit February 11, 2000, claiming that Spider Webs had violated the ACPA, Texas trademark and dilution law, and Federal trademark law.  Judge Crone issued a detailed opinion, and determined that the Gallo mark was distinctive and subject to trademark protection.  Spider Webs was found to have registered the domain name is bad faith, and Judge Crone ordered it transferred to Gallo.

The decision can be found at E. & J. Gallo Winery v. Spider Webs Ltd., et al., 129 F. Supp. 2d 1033 (S.D. Tex. Jan. 29, 2001).