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.
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.