Comments on: Volvo Loses A Domain “Trademark” Dispute On Domain Used In Commerce

By: Michelle

Michelle — Tue, 24 Feb 2009 23:58:10 +0000

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).

By: Steve M

Steve M — Tue, 24 Feb 2009 22:29:35 +0000

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…

By: Guess Who

Guess Who — Tue, 24 Feb 2009 20:59:00 +0000

@ 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

By: MHB

MHB — Tue, 24 Feb 2009 20:15:55 +0000

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

By: Duane

Duane — Tue, 24 Feb 2009 20:07:12 +0000

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.

By: Patrick McDermott

Patrick McDermott — Tue, 24 Feb 2009 19:40:53 +0000

“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.

By: MHB

MHB — Tue, 24 Feb 2009 18:53:34 +0000

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.

By: Guess Who

Guess Who — Tue, 24 Feb 2009 18:28:57 +0000

@ 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

By: Patrick McDermott

Patrick McDermott — Tue, 24 Feb 2009 17:56:51 +0000

“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?

By: Guess Who

Guess Who — Tue, 24 Feb 2009 16:39:26 +0000

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…