In the recent decision of Volvo Trademark Holding AB v. Volvospares / Keith White (WIPO Case No. D2008-1860, February 10, 2009) a single member Panel was faced with a dispute regarding www.volvospares.com. Since everyone knows who Volvo is, we will skip over the background info about Complainant. If you want to know more about them, go to www.volvo.com. The disputed domain was registered on January 13, 1997. The domain supposedly resolved to a web site where reconditioned, used or new replacement parts for VOLVO vehicles were offered for sale.
The Panel addressed the three elements which Complainant must prove: (i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith.
First the Panel reviewed whether the domain was identical or confusingly similar to the VOLVO mark. The Panel explained:
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to those trademark rights. The Respondent appears to dispute this, contending that the disputed domain name is totally representative of what is to be found at the website. This mistakes the nature of the inquiry at this stage. What is required at this stage is a comparison of the disputed domain name itself to the proved trademark rights. The point made by the Respondent, however, may be relevant at the stages of considering rights or legitimate interests and registration and use in bad faith.
The Panel then moved to the second prong, namely, whether or not Respondent had any rights or legitimate interests in the domain. The Panel spent much of its opinion on this factor. The Panel explained that WIPO provides an overview of principles which address some of the specific concerns in this dispute. The question presented was whether or not a reseller can have a legitimate interest in the disputed domain. WIPO Overview paragraph 2.3 states:
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 reviewed the facts and evidence presented and concluded that Respondent was offering Complainant’s goods for sale in good faith. The Panel also found that Respondent is not disentitled to sell the products, because although not all products were actually branded as VOLVO, it is understood that even VOLVO has parts in their vehicles which do not have the VOLVO mark on them. Instead as Respondent points out, many parts bear a third party mark, such as BOSCH spark plugs.
The parties also argued about the presence and the timing of a disclaimer on the disputed domain, which stated “Volvospares.com has no affiliation with Volvo Group and makes no claim to or implication of being associated in any official business capacity in conjunction with or for such companies.” Complainant contended that the disclaimer was not put on the site until after the commencement of the dispute. The Panel found that the presence or absence of a disclaimer was not conclusive or fatal.
The Panel made the additional following observations and findings:
Considering the Respondent’s website as a whole and each specific page, the Panel finds it does not misrepresent any association with the Complainant (or the VOLVO group). It represents nothing other than what appears to be true – that the Respondent 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 Complainant 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.
Ultimately the Panel found that Respondent had rights or legitimate interests in the domain. The Panel quickly made finding regarding the bad faith prong, noting that the domain was not registered or used in bad faith. As a result, the Panel DENIED the request for transfer.
Defend My Domain Commentary: The U.S. Supreme Court, in the 1947 ruling in Champion Spark Plug Co. v. Sander, 331 U.S. 125 (1947), found that a second-hand dealer may use the trademark of the manufacturer so long as the manufacturer is not identified with inferior qualities of reconditioned parts. A full and clear disclosure by the reseller that it sells reconditioned parts is necessary.
