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Instances of Registration and Use Outside Scope of the Policy

The Policy’s scope is limited to “‘abusive registrations’ made with bad faith intent to profit commercially from others’ trademarks.” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, 4.1(c). The Report continues that “the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.” Where there is no intent “to profit commercially from others’ trademarks” there can be no bad faith. Claims for breaches of contract and fiduciary duty, for example, that require the Panel to delve into the parties’ legal relations are generally outside the scope of the Policy.

In Vans, Inc. v. Military and Rescue Supply, FA1109001407743 (Nat. Arb. Forum December 6, 2011), the Respondent is one of a number of affiliated companies one of which either has (or had) a distribution agreement with the Complainant. “Respondent, through its affiliated entities had a long-standing business relationship with the Complainant. Pursuant to that relationship, these affiliated companies sold Complainant’s goods. Although Respondent does not have a distributorship agreement with Complainant, it has continued to sell Complainant’s goods, and other merchandise that does not compete with Complainant’s business.” On these facts, the Panel determined that the disputed domain name was registered in good faith, and since the merchandise on the website to which the domain name resolves is not competitive with Complainant’s business there is no evidence of bad faith use.

As in Vans, the parties in Prevost Car Inc. and Volvo Group Canada Inc. v. Lori Cooper, D2011-1427 (WIPO November 22, 2011) were subject to U.S. jurisdiction and both Respondents were in the business of selling Complainant’s goods. The Panel noted in Prevost that the “claim that the mere use of the domain name itself creates ‘initial interest confusion’ is no longer good law throughout the U.S. under Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). “Complainants acknowledge that, at least as of 2004, Prevost Car Inc. expressly granted to Phil Cooper Motor Homes the right to ‘continue its use’ of the <prevost.com> domain name,” but argue that “that consent agreement was ‘revocable’ and that it has been effectively revoked.”

While express revocation would support complainant’s contention, equivocal revocation does not. Thus, in Prevost, “while the unsigned document provided by Complainants evidences its consent in 2004 to the registration and use of the domain name, it does not establish that the consent was revocable, much less unilaterally revocable.” The consensus view is that “there are circumstances where a reseller or distributor may make a bona fide offering of goods and services and thus acquire a legitimate interest in the domain name,” citing WIPO Overview, Question 2.3. “Those circumstances generally include: (1) actually offering the goods and services at issue, (2) using the site to sell only the trademarked goods, and (3) the site’s accurately disclosing or disclaiming the registrant’s relationship with the trademark owner.”

Even though in Prevost, Respondent does not use the site to sell PREVOST vehicles exclusively, the evidence suggests that the site is used primarily to sell PREVOST vehicles and that “that use has for many years been with Complainants’ express consent.” Thus, “[u]nder the particular circumstances of this case, the Panel would find that even if Complainants’ had made a prima facie showing as to paragraph 4(c)(i) of the Policy, that that showing had been rebutted.” Long time use with the complainant’s blessing creates a factual issue beyond the scope of the Policy. “[T]he Panel views the question of the parties’ contractual rights and obligations, if any, relating to the consent ‘agreement’, to be well beyond the scope of these proceedings.”

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