UK-based Green Tyre Company plc makes polyurethane tyres without
inner tubes for bicycles, wheelchairs and light industrial
applications. It uses the domain name greentyre.co.uk. But the .com
domain name is owned by Shannon Group of Randolph, New Jersey and
used by Greentyre USA Ltd.
Greentyre USA also sells tyres without inner tubes – but brands
them Flat-Free tyres, not Greentyre.
Shannon Group was an authorised distributor of the UK company's
products for four years. The UK company says that it allowed
Shannon Group to register greentyre.com on condition that it would
relinquish ownership upon request.
After the distribution deal ended, the UK company says that it
licensed Greentyre USA to use the Greentyre trade mark and allowed
it to use the domain namegreentyre.com
was still registered to Shannon Group.
The UK company said that it terminated Greentyre USA's licence
to use the trade mark and domain name in June 2004. But Shannon
Group did not transfer the name.
The UK company took its complaint to the domain name arbitration
service of the World Intellectual Property Organisation (WIPO).
The arbitration proceeding was not defended, but Greentyre
USA contacted OUT-LAW, saying: "There was never a licensing deal
between the two companies and Greentyre USA neither acknowledged
nor promised to transfer the domain name."
Even on the UK company's version of events, WIPO panellist
Alfred Meijboom was not impressed.
Meijboom accepted that, based on the UK company's
claims, Shannon Group would no longer have rights or
legitimate interests in greentyre.com. But the failure to show bad
faith registration – even if subsequent bad faith use could be
shown – was fatal to a claim under the Uniform Dispute Resolution
Policy, the rulebook followed by WIPO.
"It is important to keep in mind," wrote Meijboom, "that the
Policy was designed to prevent the extortionate behaviour commonly
known as cybersquatting and that it cannot be used to litigate all
disputes involving domain names".
Editor's note, 28/10/2005: Greentyre USA
contacted OUT-LAW to dispute the UK company's version of events and
to correct our originally-inaccurate identification of the parties
involved. We apologise for this error.
