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View Full Version : The tide is turning against Volvo



AWD*V70XC
07-06-2005, 03:50 AM
News just hitting the airwaves suggests that Volvo is losing it's domination over its use of the Volvo name, the following explains why -



Volvo has lost an attempt to recover the domain name volvo-auto-body-parts-online.com from a spare parts dealer, with an arbitration panellist saying that unauthorised dealers can enjoy the same rights to a trade mark as authorised dealers.


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.”




Source http://www.out-law.com/page-5863 (http://www.out-law.com/page-5863)