Volvo crashes out in complaint over 'volocars.com'

In Volvo Trademark Holding AB v Old Volo Inc, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'volocars.com' to the complainant. The panel held that although the domain name is confusingly similar to the complainant's VOLVO mark, the registrant has a legitimate right to use it for its antique car museum in the US community of Volo, Illinois, and had not registered it in bad faith.

Volvo Trademark Holdings AB, a subsidiary of the Swedish car manufacturer Volvo Group, owns the famous VOLVO trademark and has been using the trade name 'Volvo Cars' in the United States since 1992. It filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) arguing that Old Volo Inc's registration and use of the domain name 'volocars.com' infringed its trademark rights. Old Volo, which trades as Volo Classic Cars, operates in the small community of Volo, Illinois in the United States. It registered 'volocars.com' in 1997 to provide information on its automobile museum, which attracts thousands of visitors every year.

During the proceedings, Volvo produced evidence that:

• it had successfully defended its VOLVO trademark in nine previous WIPO decisions, indicating that it is a famous mark;
  
  
• it owns, among others, the domain names 'volvocars.com', 'volvocars.net' and 'volvocars.org'; and
  
  
• the search engine Yahoo! lists 'volocars.com' as the first hit when the phrase 'Volvo auto museum' is used as a search term.

Old Volo argued that it has a legitimate right to use the domain name to provide information about its museum and its classic car sales business. It further contended that its website is among the most popular antique and classic car sites on the Internet, yielding millions of hits every month.

The panel dismissed Volvo's complaint and refused to order the transfer of the domain name. It agreed with Volvo that 'volocars.com' is confusingly similar to its famous trademark. However, it ruled that not all of the requirements set out in Paragraph 4 of the UDRP had been met. It held that Old Volo does have a legitimate interest in the domain name as it is using it in connection with a bona fide offering of goods and services (ie, the sale of antique and classic cars). In addition, the panel held that Old Volo's business is long-standing, is not in competition with Volvo and does not stand to benefit from any presumed association with that company. It concluded that Volvo had failed to prove that Old Volo had registered and used the domain name in bad faith.

Samantha Gervais, Osler Hoskin & Harcourt LLP, Ottawa