A while ago, we already posted an article about the decision of the World Intellectual Property Organisation (WIPO) in which they approved that dealers could use a registered trademark in their domain name, as long as they meet some conditions. Volvo also experienced this.
Volvo filed a case under the dispute resolution panel of WIPO against the owner of a spare parts seller. This spare parts seller used the domain name www.volvospares.com and Volvo didn’t agree on this. So Volvo had to proof that Volvospares violated this 3 rules:
- The domain name is confusingly similar to the registered trade mark
- The domain name holder has no right or legitimate interest in the domain names
- The domain name has been registered in bad faith
According to Volvo this was the case for Volvospares. ‘The name is confusing, Volvospares has a legitimate interest in the domain name and the name has been registered in bad faith,’ said Volvo.
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
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.
Volvo argued that Volvospares had not fulfilled the 3 requirements outlined in WIPO’s rules. To test the first suspicion, namely that the goods were actually offered and sold, Volvo’s said that they have 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.
‘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,’ said the 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. WIPO agreed with Volvospares.
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.
‘If you look at each specific page of the website, you can’t find any misrepresetation of an association with Volvo,’ said Rothnie. ‘ This site doesn’t show anything else than what appears to be true namely 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 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.
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This post was written by lieve on February 26, 2009