Recent UDRP decisions have revived the application of the long standing “Oki Data” precedent. In the cases briefly discussed below, UDRP panels have applied the Oki Data principles in cases where the services offered on the websites at the disputed domain names were ancillary to those of the trademark owner or competing with these.
Background
As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names.
To succeed in a UDRP complaint, a trademark owner must prove three cumulative conditions: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith.
With respect to the second element above, paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of a dispute, the respondent used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Generally, registering a domain name identical or confusingly similar to another’s trademark rights is not permissible. As an exception, such registration might confer rights or legitimate interests, to legitimate resellers, distributors or dealers, subject to any agreement between the parties.
The criteria for such a use by resellers to qualify as a bona fide offering of goods or services was developed under one of the first decisions rendered under the UDRP. The case involved Oki Data Americas, Inc., a company that developed, manufactured and sold a full line of computer peripherals and accessories, including printers, facsimile machines and parts thereof, and the respondent, that was selling parts for OKIDATA products (purchased from the complainant’s distributors) and offered repair services as an authorized Oki Data Repair Center.
The Oki Data test developed in the above case sets out four cumulative conditions that respondents must meet if panels are to find it is making a bona fide offering of goods or services and thus have a legitimate interest in a domain name which incorporates a third party’s trademark:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the website must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official website, if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name.
Application of the Oki Data Test in Resellers Cases
The above criteria, constantly referred to as the Oki Data test was consistently applied by UDRP panels and included in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (now at its third edition: WIPO Overview 3.0), according to which panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name.
If the Oki Data requirements are not cumulatively fulfilled, panels find that the respondent has failed to demonstrate rights or legitimate interests in the domain name at issue. In assessing this, panels often find that products of competitors are also sold on the website at the disputed domain name, or there is no disclaimer with respect to the lack of a relationship between the parties, or both.
Due to the risk of impersonation, in cases involving a domain name identical to the complainant’s trademark, panels generally find that a respondent lacks rights or legitimate interests.
Application of the Oki Data Test in Other Situations
The Oki Data test is also applied by UDRP panels in cases where the domain name registrant is using the domain name in dispute to provide services that are ancillary to those of the trademark owner or competing with those of the complainant.
A recent example is found in the WIPO case no. D2022-1225 concerning the domain name <instavast.com>. The complainant Instagram LLC operates the Instagram online photo- and video-sharing social-networking application, while the website at the domain name in dispute was offering various tools to users of the complainant’s Instagram app, such as tools for the automated buying of Instagram likes and views. The panel applied the Oki Data test and concluded it was not satisfied as the respondent’s website did not disclose the lack of any relationship with the complainant. The Panel found that “the nature of the services precludes a finding of rights or legitimate interests, as Respondent is taking unfair advantage of the Complainant’s marks to offer competing services.”
Another example is found in the WIPO case no. D2021-3709, concerning the domain name <takeielts.net>. The complainant (British Council, The Chancellor, Masters and Scholars of the University of Cambridge, UK and IELTS Australia Pty, Australia) operates the International English Language Testing System (IELTS) since 1989. The results of the mentioned test are accepted by many academic institutions worldwide and the UK government as proof of English language ability. The complainant promotes the test, inter alia, at its main website at <www.ielts.org>. The website at the disputed domain name was offering mock examinations for IELTS exams. The panel considered that it is appropriate to approach the analysis under the second element of the UDRP as a reseller/distributor case, even if the respondent was offering a service which was an adjunct to the complainant’s own service. Examining the evidence in the case file, the panel concluded that the respondent has failed to comply with the Oki Data requirement to accurately and prominently disclose the relationship with the trademark holder.
A similar solution in the WIPO case no. D2021-2980 concerning the domain name <nclexwebinars.com> and case no. D2021-2979 concerning the domain name <nclexwebinar.com>, where the disputed domain names resolved to websites offering training programs to prepare student for NCLEX exams, developed and conducted by the complainant under the NCLEX trademark. The panel applied the Oki Data test by analogy, considering that the respondent might be providing services of an accessory nature to the NCLEX exam, even if it may not be seen as a reseller or distributor of the complainant’s products or services.
Another situation was analysed in the WIPO case no. D2021-3918 concerning various domain names, including <gfsiaudit.net>, where the complainant was acting in the food and retail sector, and launched the Global Food Safety Initiative, with the goal of reassuring and strengthening consumer confidence in the quality and safety of food products, the initiative being commonly known by its acronym GFSI. The respondent was using the disputed domain name to resolve to websites promoting the respondent’s food safety compliance-related software, branded as KLEANZ. The panel applied the Oki Data test with a “small degree of adjustment” for the specific circumstances of the case.
The panel considered that the second principle is not fulfilled as:
“the Respondent’s website promotes its software as capable of being used in order to meet not only standards certified by the Complainant’s GFSI initiative, but at least ten other compliance standards, i.e., it is used to draw users in by invoking a notion of the Complainant’s reputation only to promote the Respondent’s services related to the Complainant’s competitors (a form of “bait and switch”).”
Also, the fourth criteria was not fulfilled: “the registration by the Respondent of 10 domain names which incorporate the Complainant’s mark each of which combines the mark “GFSI” with another word loosely associated with the Complainant’s initiative goes well beyond any conceivable business need and, to that extent, the Respondent has sought to corner the market in domain names which incorporate the Complainant’s mark.”
Takeaways
The Oki Data test is consistently applied by UDRP panels when assessing abusive registration of domain names and whether the registrant has rights or legitimate interests in the domain name at issue. The Oki Data test might be applied not only to resellers cases but also in those cases where the respondent is offering goods or services ancillary to those of the complainant, or closely related to these, as well as its own competing services.
