Technology Arbitrators, Expert Determiners and Mediators Intellectual Property, Information Technology & Telecommunications Newsletter July 2006

The ICANN Rules for uniform domain name dispute resolution policy applies to all accredited domain-name registrars for domain names ending in .com, .net, and .org and has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws). Complaints under the policy may be submitted to any approved dispute-resolution service providers:

• Asian Domain Name Dispute Resolution Centre
• CPR Institute for Dispute Resolution
• eResolution
• The National Arbitration Forum
• World Intellectual Property Organisation

The World Intellectual Property Organisation (“WIPO”) determines domain name disputes through its Arbitration and Mediation Centre.

In May 2006, a complaint was filed with WIPO regarding the domain name “vovlo.net”. The party that had registered the domain name was Domaincar from Panama. Volvo Trademark Holding AB (“the Complainant”) from Sweden filed the complaint. This company owns the VOLVO trade mark throughout the world and licences it to AB Volvo and Volvo Car Corporation.

VOLVO is a well known trade mark and previously, similarly misspelt domain names had been transferred to the Complainant, including “vovlo.com” and “vlovo.com”.

The complainant argued, amongst other things, that:

• the domain name “vovlo.net’ is identical or confusingly similar to the trade mark VOLVO;
• Domaincar had no rights or legitimate interests in the domain name and had not been authorised to use the Volvo trade mark; and
• The domain name had been registered and used by Domaincar in bad faith as Domaincar could only have chosen the domain name to attract visitors to its website who inadvertently misspelt the word “Volvo” and the “vovlo.net” website provided links to websites associated with the sale of vehicles in competition with the Complainant’s vehicles.

Accordingly, the Complainant sought to have the domain name transferred to the Complainant.

Despite the fact that Domaincar did not make a submission, the Complainant had to show that all three elements of the ICANN policy were made out before the name could be transferred. These elements include that:

• your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
• you have no rights or legitimate interests in respect of the domain name; and
• your domain name has been registered and is being used in bad faith.

It was decided that the Complainant had made out each of these elements. When looking at the last element, it was noted in the decision, amongst other things, that Domaincar had a record as a serial cybersquatter.

The decision of the arbitrator was that the domain name should be transferred to the Complainant.

For further information about the arbitration process for domain name disputes, see the WIPO supplemental rules for uniform domain name dispute resolution policy

Mr White, the Principal of Technology Arbitrators, Expert Determiners and Mediators is Steve is a qualified mediator and arbitrator, a member of the Law Institute of Victoria, a member of the Law Society of New South Wales, a fellow of the Australian Computer Society, an accredited mediator and graded arbitrator of the Institute of Arbitrators & Mediators Australia, a member of the WIPO Arbitration and Mediation Centre general list of mediators and arbitrators, and is a member of the Institute of Arbitrators & Mediators Australia’s .au domain name dispute resolution panel.

We can assist you by conducting the arbitration for your “.au” domain name dispute or we can also assist you with the drafting of submissions for both Australian and International domain name dispute hearings.

Steve White
Technology Arbitrators, Expert Determiners and Mediators
July 2006