Is “amphora” generic for wine?
Summary of Hutchinson Wines v. Amphora Wome Group Pty Ltd, William Howard
(WIPO Case No. DAU2011-0008)
Filed: March 2, 2011; Decided: April 21, 2011 (Panelist: Michael J. Spence)
Disputed domain name: <amphorawines.com.au>
Complainant Hutchinson Wines (“Hutchinson”) is a California winemaker. Since 1998, it has been using AMPHORA as a mark for wines sold in the United States, including through a website at the domain <amphorawines.com>. According to the Panel, “the term ‘amphora’ is a generic term that refers to an ancient form of vessel used to store and transport wine, amongst other products.”
Respondent Amphora Wine Group Pty Ltd, William Howard (“Amphora”) have been operating under their current business name since 2008. [The decision does not state when the domain was registered.] The business generates AU $3.2 million annually in sales to Australia, China, Hong Kong, New Zealand, amd Tonga.
Identical or Confusingly Similar
The Panel notes that “there can be no doubt” that Hutchinson has demonstrated its rights in the mark AMPHORA, though it has not established rights in AMPHORA WINES. In the Panel’s view, the difficult question is whether the disputed domain is confusingly similar to the mark. The Panel asserts that the common element between the marks, “amphora,” is a “generic” word used in relation to wines for over 8,000 years. Nonetheless, the Panel accepts that it is “plausible” that the mark and the disputed domain name are confusingly similar. Given its decision on the second prong, however, the Panel does not decide this issue.
Rights or Legitimate Interests
In the Panel’s view, Hutchinson failed to overcome Amphora’s assertion that it chose its name (and the disputed domain) in 2008 with the “generic” meaning of the word “amphora” in mind. Thus, Hutchinson failed to make out a prima facie showing that Amphora lacked rights or legitimate interests in the disputed domain.
In light of the Panel’s decision on the second prong, it declines to consider the third prong.
The complaint is denied.
In my view, this decision took the wrong turn at every opportunity. First, I’m not convinced that the term “amphora” is generic for wine. At most, it was generic at one time for a container not usedwith Hutchinson’s wine. The proper inquiry is whether consumers would view the term as generic. I think it’s safe to say that most people would have no idea what an amphora is. One article on the genericness of obsolete words gives this example: “[W]e suggest that the term ‘bodkin’ for knives [quoting from Shakespeare's Hamlet] would be a perfectly acceptable trademark.” A. Greenbaum, J. Ginsburg & S. Weinberg, A Proposal for Evaluating Genericism after “Anti-Monopoly,” 73 Trademark Rep. 101,125, n. 63 (1983). Of course, those authors were considering an obsolete term directly describing a non-obsolete good, whereas here the obsolete term describes an obsolete container for the good. Accordingly, the fact that Hutchinson (along with every other winemaker in the United States) does not use amphoras to sell its wine seems to preclude a finding of genericness.
Even more puzzling, if one accepts that “amphora” is generic, then how does Hutchinson have trademark rights in the term, as the Panel finds?
If asked (I wasn’t), I would analyze the case as follows: As I understand the term’s current meaning as it is likely perceived by relevant consumers, AMPHORA seems to be inherently distinctive for wines. Since Hutchinson has used the mark continuously since 1998, it has common law rights in the mark to assert against junior user Amphora. Under the first prong, the disputed domain can be rendered for our purposes as “Amphora Wines”, with the inherently distinctive term “Amphora” being the dominant portion of the mark as opposed to the generic term “wines.” Thus, “Amphora Wines” is confusingly similar to the AMPHORA mark. In fact, the addition of the actually generic term “Wines” to Hutchinson’s mark only adds to the confusion, since Hutchinson also sells wine.
In the end, this decision would probably turn on bad faith, and there appears to be very little evidence of Amphora’s intent in adopting the disputed domain name. Thus, since the complainant bears the burden of proof on that issue, the outcome may very well have been the same. And of course, it goes without saying that I didn’t see the evidence of record. Still, I can’t say that I agree with the Panel’s approach here.