The case was heard by the dispute resolution panel of the World
Intellectual Property Organisation (WIPO), which can order the
handing over of an address if three criteria are met.
Those are that the domain name is identical or confusingly
similar to someone else's trade mark or service mark; that the
owner has no rights or legitimate interests in it; and that the
domain name was registered and is being used in bad faith.
Swedish car maker Volvo argued that Cape Town-registered
Volvospares' use of the domain name broke all three rules. The WIPO
panel disagreed.
The panel said that the name was confusingly similar to Volvo's
trade marks and that it was not registered and used in bad faith,
but the most hotly contested issue was whether or not Volvospares
had a legitimate interest in the domain name.
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," said the WIPO ruling. "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.
Volvo's claim was denied and the domain name can continue to be
owned and controlled by Volvospares.com.
Disclaimer: We hope you find OUT-LAW’s content useful. It’s prepared by the lawyers at Pinsent Masons. Please remember, though, that it’s intended as general information only. It’s not legal advice. If that’s what you’re seeking, please
contact us. See also: our
full disclaimer
