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 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.”
