UK-based Green Tyre Company plc makes polyurethane tyres without inner tubes for bicycles, wheelchairs and light industrial applications. It uses the domain name greentyre.co.uk. But the .com domain name is owned by Shannon Group of Randolph, New Jersey and used by Greentyre USA Ltd.
Greentyre USA also sells tyres without inner tubes – but brands them Flat-Free tyres, not Greentyre.
Shannon Group was an authorised distributor of the UK company's products for four years. The UK company says that it allowed Shannon Group to register greentyre.com on condition that it would relinquish ownership upon request.
After the distribution deal ended, the UK company says that it licensed Greentyre USA to use the Greentyre trade mark and allowed it to use the domain namegreentyre.com was still registered to Shannon Group.
The UK company said that it terminated Greentyre USA's licence to use the trade mark and domain name in June 2004. But Shannon Group did not transfer the name.
The UK company took its complaint to the domain name arbitration service of the World Intellectual Property Organisation (WIPO).
The arbitration proceeding was not defended, but Greentyre USA contacted OUT-LAW, saying: "There was never a licensing deal between the two companies and Greentyre USA neither acknowledged nor promised to transfer the domain name."
Even on the UK company's version of events, WIPO panellist Alfred Meijboom was not impressed.
Meijboom accepted that, based on the UK company's claims, Shannon Group would no longer have rights or legitimate interests in greentyre.com. But the failure to show bad faith registration – even if subsequent bad faith use could be shown – was fatal to a claim under the Uniform Dispute Resolution Policy, the rulebook followed by WIPO.
"It is important to keep in mind," wrote Meijboom, "that the Policy was designed to prevent the extortionate behaviour commonly known as cybersquatting and that it cannot be used to litigate all disputes involving domain names".
Editor's note, 28/10/2005: Greentyre USA contacted OUT-LAW to dispute the UK company's version of events and to correct our originally-inaccurate identification of the parties involved. We apologise for this error.
