Panel spares registrant of 'volvospares.com'
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In Volvo Trademark Holding AB v Volvospares (Case 008-1860, February 10 2009), a World Intellectual Property Organization (WIPO) arbitration panel has reaffirmed the circumstances in which an unauthorized reseller can establish a legitimate interest in a domain name.
Volvo Trademark Holding AB is the trademark holding entity within the Volvo car and vehicle manufacturing group. Use of Volvo’s trademark VOLVO can be traced back to at least 1927. It is registered in many countries throughout the world, alone or in combination with other terms.
Volvospares first registered the domain name 'volvospares.com' on January 13 1997. The domain name resolves to a website which offers for sale used, reconditioned and new parts for Volvo vehicles. On three occasions, counsel for Volvo attempted to order VOLVO-branded parts from the website. In none of these cases were the goods supplied and the credit cards used for the purchases were never charged.
To succeed in a dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP), a complainant must establish that:
- the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The panel had no hesitation in finding that the domain name was confusingly similar to Volvo’s family of VOLVO marks, which the panel concluded was famous in many parts of the world for motor vehicles and related goods and services.
With respect to whether Volvospares had a legitimate interest in the domain name, Volvo noted that:
- Volvospares was not affiliated with Volvo;
- Volvospares was not authorized by it to use the VOLVO mark; and
- the domain name was not derived from the respondent’s own name.
Volvo contended that Volvospares was nothing other than an unauthorized reseller or dealer.
The panel noted that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, following a line a decisions under the UDRP, set out the principles to be considered in determining whether an unauthorized reseller is entitled to a domain name, namely:
"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."
The panel noted that Volvospares was able to establish that it had operated its website for over 10 years continuously and was offering for sale parts or spares for Volvo vehicles. Although not all the parts offered for sale on the website were VOLVO-branded parts, the panel noted that Volvo cars include parts manufactured by third parties. In any event, the panel concluded that offering for sale a relatively small or subsidiary range of associated products did not disentitle Volvospares from claiming rights or legitimate interest.
With regard to whether the website disclosed the nature of the relationship between Volvo and Volvospares, the panel noted that the current version of the website included a disclaimer that Volvospares was not affiliated with Volvo. The panel stated that the overall impression of previous versions of the website did not have an appearance which suggested that it was authorized by Volvo.
Finally, the panel noted that there was no evidence that Volvospares was attempting to corner the market in 'Volvo'-formative domain names.
Having concluded that Volvospares had a legitimate interest in the domain name 'volvospares.com', the panel found that the domain name had not been registered and was not being used in bad faith. Accordingly, the complaint was denied.
Antonio Turco, Blake Cassels & Graydon LLP, Toronto
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