The car maker Volvo, filed a case under the dispute resolution panel of the World Intellectual Property Organization (WIPO), against the owner of a spare parts seller, for control of the domain volvospares.com.
The panel found that the owner of volvospares.com was found to have legitimate interests in the name.
The panel said that although the domain was confusingly similar to Volvo’s trademarks it was not registered and used in bad faith.
You do not always have to be a trade mark holder or have the holder’s permission in order to own a domain name related to a mark, the panel noted.
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements,”
“These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
Volvo argued that Volvospares had not fulfilled the three criteria outlined in WIPO’s rules: that it actually offer goods; that it sell just those trade marked goods; and that it makes clear that it is not affiliated to Volvo.
To test the first suspicion, Volvo’s UK and Swedish lawyers said that they made three secret test purchases from Volvospares. In all three cases the goods ordered were not delivered, they said.
The WIPO panel did not accept that this meant that Volvospares broke its rules.
“In none of these cases were the goods supplied and the credit cards used for the purchases were never charged,” it said. “[Volvo] contends, therefore, that while [Volvospares] appears to be offering the goods for sale, they must actually be available for sale for the relevant rights or legitimate interests to arise.”
“While the failure to supply the parts might raise suspicions, it is very difficult in a proceeding such as the present to go further than that, particularly when regard is paid to the nature of the [Volvospares’s] claimed business,” said the sole panellist for WIPO, Warwick Rothnie. “In these circumstances, the Panel is unable to accept [Volvo’s] invitation to find that [Volvospares] is not in fact offering [Volvo’s] goods for sale in good faith.”
Volvo claimed that the second condition – that Volvospares sell just Volvo trade marked goods – was not satisfied because it sold parts bearing other people’s names and trade marks.
But Volvospares pointed out that it was a site for selling spare parts for Volvos, and even Volvo cars had many parts made by other people, such as spark plugs by Bosch, filters by Mann and tyres by brand-name tyre manufacturers.
The WIPO panellist said that the fact that non-Volvo parts were for sale should not strip Volvospares.com of its right to the name.
Thirdly, Volvo said that the site did not make it clear that it was not affiliated to Volvo. The site now carries a disclaimer but there was a dispute about whether that was added before or after the complaint was made.
The WIPO panellist said that a disclaimer was not essential, though.
“Considering the Respondent’s website as a whole and each specific page, the Panel finds it does not misrepresent any association with [Volvo],” said Rothnie. “It represents nothing other than what appears to be true – that [it] offers for sale from the website parts for Volvo vehicles.”
“On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the [Volvo] or the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added,” he said.
This is another example of where if you have a developed site, rather than a parking page, you can get a fair use ruling and keep a ‘trademark” domain.
You should also read a post we wrote a few months ago about another case.
In that case another WIPO decision, found that a dealer or reseller can use the trademark of a manufacturer even if not authorized by the manufacturer to reseller it products and without the trademark holder permission.
Interesting case and also interesting decision.
It looks like The Panelist must has a bad experience his Volvo car 🙂
I agree with you about developed website is better than parking page with “TM” domain but still risky though.
Amazing that Volvo still hasnt purchased the .net, .org .co.uk etc of this domain if they were that interested in actually owning the domain.
They were all still available to register this afternoon.
p.s. – I better not say this is a great post – Apparently that is welcome… ha ha
or put the name of my site on here either…
“Amazing that Volvo still hasnt purchased the .net, .org .co.uk etc of this domain ”
—–
Guess Who,
Why should they?
Volvo’s intention in filing the dispute wasn’t because of their
interest in the domain name itself.
Volvo wanted control of the domain because they didn’t want someone else to use their Trademark.
Yes they could register all the other extensions that are available.
It would be cheaper to register a domain than to file a UDRP.
But that’s only when you consider a domain in isolation
and not when you consider domains in aggregation.
Where would it end?
Think of all the possible “KeywordVolvo” and “VolvoKeyword”
domains that could be registered.
Is it in the thousands, tens of thousands, hundreds of thousands ,millions?
How many defensive registrations should any trademark
holder have to make?
@ Patrick – Im not saying they should have to register all pos volvo domains but what Im saying is if they want to protect there brand they should register these also I believe it would show the UDRP board that they are serious about protecting there TM.
Also what about names like VolvoCarParts.com .net & .org – Are they going to after domains like this also?
I think they should have brought this up at there case also to show that many people are using there TM
Guys
These 2 WIPO decisions show you can use these types of domains if they are used in commerce by a real business.
All reasonable defensive registrations should be taken by trademark holders now that they see fair use domains can be used by third parties.
volvoparts, volvocarparts, usedvolvos and similar domains are extremely logical and reasonable and failure to make such defensive registrations are at the peril of the trademark holder.
Moreover for the cost of 1 WIPO or UDRP action using the lawfirms such major trademark holders use, they could register I would say 1,000 domains.
“volvoparts, volvocarparts, usedvolvos and similar domains are extremely logical and reasonable and failure to make such defensive registrations are at the peril of the trademark holder.”
MHB,
I agree with everything you said…BUT…do you think
defensive registrations should have to include regging .NET,.ORG,.INFO,.BIZ,.US,.ME, etc…etc?
That was my point.
Maybe the GTLD’S are not such a bad idea.
1. IMOH, every trademark should own there GTLD.
2. Also I find they company should go after.
3. The GTLD should be for free because the only ones aloud to use them are the trademarks, not even ICANN could register them.
4. When the GTLD’S are out to register, by law there should not be a further case forwarded to WIPO!
When trademarks have there own extension, they have everything they need. So why put up a fight then?
If these rules would apply, it would make life a hell of allot easier and most domainers a hell of allot richer.
Just dreaming out loud.
Patrick
For me the answer is no I wouldn’t do defensive registrations of variations of brands into the other extensions.
Just direct ones, like volvo.net, .org etc, in this example and the country code for Sweden and .eu
@ Patrick – I do share your thoughts also I dont expect all TM holders to register thousands of domains just in this case they hadnt even picked up reg fee ext of the same name and it seemed it would have helped there case imo if they could show they were trying to protect there brand.
Only my thoughts
Nice, well-deserved win for the domain owner…though I’ll be surprised if Volvo doesn’t now file a lawsuit to try to get it…
TM owners are not pro-active. They are re-active to domain infringements. As long as IP counsels are responsible for the management of domain names, they won’t have an effective online strategy because they lack the commercial acumen to understand domains beyond IP (my opinion, of course).