Volvo lost its case against Auto Shivuk, an unauthorised
e-tailer of Volvo car parts, after World Intellectual Property
Organisation (WIPO) panellist Torsten Bettinger decided that the
Israeli company had a legitimate interest in using it.
Bettinger considered other decisions on the question of “whether
an unauthorised dealer of auto parts has a legitimate interest to
use the manufacturer’s trade mark with the addition of descriptive
elements as domain name”.
He followed the guidance from a 2001 case where Oki Data
Americas, a computer accessories maker, took action over another
company's use of the domain name Okidataparts.com.
That case said that the use of a manufacturer’s trade mark as a
domain name by an authorised dealer or reseller is only acceptable
under the Uniform Domain Name Dispute Resolution Policy (UDRP) –
the rules for such .com arbitrations if:
- The dealer is actually offering the goods or services at
issue;
- The dealer is using the site to sell only the trade marked
goods;
- The site discloses the dealer’s relationship with the trade
mark owner; and
- The dealer has not tried to corner the market in all domain
names.
The Oki Data case, said the Panel, should also be applied to
unauthorised dealers and, on looking at the facts, Auto Shivuk
complied with all four requirements.
But this does not mean that others' trade marks can be used in
domain names with impunity.
Bettinger pointed out to Volvo that the UDRP is intended to deal
with cybersquatting only, not cases of classic trade mark
infringement, which should be left to the courts.
Bettinger wrote:
“If trade mark owners wish to prevent the
use of their marks by authorised or unauthorised resellers in
domain names, they should seek recovery in classic trade mark
infringement or dilution litigations. In the absence, however, of
some element of illegitimacy, they should not use the Policy to
prevent uses that ICANN deemed to be legitimate, including the use
of domain names in connection with the bona fide offering
of goods and services.”
