Nominative fair use and initial interest confusion are opposite propositions, but they have in common unauthorized use of a complainant’s trademark. In both, the Internet user may initially believe that the domain name will take him to a website sponsored by the trademark holder. Yet, the first qualifies as a defense and the second signifies abusive registration. The Respondent’s use of <america-steinway.com> in Steinway, Inc. v. Carey Simon, FA1004001418229 (Nat. Arb. Forum June 2, 2010) is ruled to be nominative fair use. The Respondent in Gibson, LLC v. Jeanette Valencia, D2010-0490 (WIPO May 22, 2010) is found to have registered and is using <moderncowgirls.com> in bad faith.
Differentiating nominative fair use and initial interest confusion hinges on use; whether the respondent’s business is distinguishable from and noncompetitive with the complainant’s. When the Internet user arrives at <america-steinway.com> he finds a company dedicated to refurbishing and reselling Steinway pianos with an appropriate disclaimer that it is not the maker of pianos. At <moderncowgirls.com> the Internet user found a website selling goods competitive with the Complainant. Initial interest confusion websites may also contain a disclaimer, but their offerings of goods or services are not bona fide because they are using the trademark to compete with the complainant.
As the Panel notes in Steinway, the “prevailing view in other UDRP cases is that a reseller of goods has a right to incorporate a manufacture’s mark in an offering of goods and services” when it passes a test originally formulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). The list of businesses legally entitled to use a complainant’s trademark without authorization has grown beyond resellers, discussed on June 1, “Selling a Service Based on Goods Produced by Trademark Holder.”
It is useful in understanding application of the opposite propositions to revisit a case in which the UDRP complaint was denied on the ground that the Complainant failed to prove that the Respondent registered the disputed domain name in bad faith. The Panel in Volvo Trademark Holding AB v. Volvospares / Keith White, D2008-1860 (WIPO February 10, 2009) does not refer to nominative fair use, but the domain name <volvospares.com> suggests an independent business providing spares for Volvo vehicles and the Respondent claimed to be a “reseller”. The facts recited by the Panel appear to support a legitimate business in used parts. However, while the website captured in December 2007 on Archive.com appeared to offer spare parts, the Complainant alleged that it had attempted to make purchases from the website without response, supporting the inference that the website was a fake created solely to attract Internet users for traffic.
A number of the precedential decisions involve reselling goods on the after market, DaimlerChrysler A.G. v. Donnald Drummonds, D2001-0160 (WIPO June 18, 2001); Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, D2004-0481 (WIPO August 20, 2004); Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 8, 2005) (<volvo-auto-body-parts-online.com>). Missing in the Panel’s recitation of facts in Volvospares was any evidence that there was in fact a functioning business, rather than an appearance of one.
Upon issuance of the adverse decision in Volvo Trademark the Complainant commenced an ACPA action in the United States District Court for the Eastern District of Virginia. The Court by Order dated April 1, 2010 granted summary judgment to plaintiff and directed transfer of the disputed domain name. (I would like to thank Christian Lavers, Esq. for bring the federal action to my attention in the Firm’s blog.) The defendant (respondent in the UDRP proceeding) did not formally appear. Had it done so, it could have offered evidence (if it had any) that its registration and use was nominative fair use. Although the Respondent evidently satisfied this burden for the UDRP Panel (perhaps was given the benefit of the doubt) it was otherwise in federal court. There, it would (had it not defaulted in appearance) be put to the test of actually producing evidence that it truly was what it represented itself to be, namely a legitimate business offering used spare parts for Volvo vehicles. Instead, it offered (informally) only the UDRP decision which “is neither admissible, nor entitled to any deference.” The defendant’s other argument (again only informally in a letter to the Court) was without merit, namely that its registration of “volvo” paired with a generic term, “spares” preceded Volvo doing likewise.
In assessing infringement of trademarks generic additions do not create a new distinctive mark. If there is no business (it cannot be passively held) there is no nominative fair use.