A recent .au Domain Name Dispute Resolution Policy (“auDRP”) dispute involving GM Holden Ltd (“GM Holden”) highlights the relevance of a pattern of behaviour in determining whether domain names have been registered in good faith. In this case, the fact that the respondent had also registered domain names that included brands such as Toyota, Ford and Chrysler was used to support a finding that the domain names in question had not been registered in good faith.
In GM Holden Ltd. v. Bradley John Lawless the Panel was required to determine whether three domain names, “holdenplatinumservice.com.au”, “holdenservice.net.au” and “servicingholden.com.au”, should be transferred to GM Holden. These domain names had been registered by the sole director of an Australian car servicing business, Platinum Automotive Group Pty Ltd (“Platinum Automotive”).
GM Holden argued, among other things, that the “holdenservice.net.au” website was misleading and deceptive, in that it represented an association between the parties or that Platinum Automotive was a dealer or authorised service centre for Holden cars (when there was no such association or arrangement in place). Holden also asserted that it was the “exclusive authorised user” of the HOLDEN trade marks therefore any use by Platinum Automotive or the Respondent was clearly unauthorised. The Respondent, by contrast, focused on the fact that the website referred to the Platinum Automotive brand and hence (according to the Respondent) there could be no customer confusion or issue of passing off. The Respondent also brought up the longevity of the Platinum Automotive brand and the investment spent on development of the website as arguments against transfer of the domain names.
The Panel found that:
- the domain names were confusingly similar to GM Holden’s trade marks for HOLDEN, due to the fact that the dominant word in each of the domain names was “Holden”;
- Platinum Automotive had no rights or legitimate interests in respect of the domain name “holdenservice.net.au” (and that the “holdenservice.net.au” website did give the impression that the parties were affiliated); and
- all three domain names had been registered in bad faith, and in the case of “holdenservice.net.au” subsequently used in bad faith, rejecting the Respondent’s argument that by using the word “service” and including its own brand on the website there was sufficient differentiation between its own operations and those of GM Holden.
The fact that the Respondent had also registered domain names including other famous brands led the Panel to believe that the Respondent sought to drive business away from GM Holden’s authorised service centres (and these other manufacturers). The Panel also commented that there was “an overwhelming likelihood that the Respondent chose the domain names because of their identity to the HOLDEN trade mark.”
Based on these findings, the Panel ordered the transfer of the domain names to GM Holden.
Click here for the full text of this auDRP decision.
