WIPO Case No. D2019-1726
September 11, 2019
The important Oki Data case has had another outing. It is a very important case, as it creates several circumstances where a respondent/ registrant of a domain name can defeat a claim and hold onto the domain name, even where it is using the complainant’s trademark in its domain name. Generally, the Oki Data exemption applies where the Respondent is an agent of the trademark owner and is distributing its wares. But it is subject to “principles” and if they are not complied with the Respondent may find it cannot rely on Oki Data and it loses the domain name. That is what happened in the present case.
So the question was: Is an authorised sales or service agent of trademarked goods able to use the trademark at issue in its domain name?
The case centred around the disputed domain name <iqosbicak.com>, which was used by the respondent to offer repair and maintenance services for the Complainant’s IQOS smoke-free products. Notably, on the website at the disputed domain name, there was multiple use of the Complainant’s trademarks, as well as product images without any disclaimers describing the relationship between the two parties.
The Oki Data case concerns the rights of repairers and service agents to register domains which incorporate the trademarks of the products they repair
Phillip Morris had no issues proving it held trademark rights for IQOS. However, the key issue before the panel was whether Respondent’s repair and maintenance business of the Complainant’s products was a legitimate interest in the domain name in connection as a bona fide offering of goods or services. Not filing a response certainly didn’t help the respondent in this regard. Ultimately the panel accepted the Complainant’s argument that the domain name indicated a false suggestion of an official link between Respondent and Complainant. In making their decision, the Panel heavily cited Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Oki Data), in which a Respondent was able to keep a domain which incorporated the trademark of the Complainant, because they were an authorised repairer of the Complainant’s goods, and were clear about this relationship on their website. The panel found the Oki Data principles did not apply in the Philip Morris case, and the domain was transferred.
From this case, and others frequently cited in UDRP proceedings, it is worth acknowledging that service agents and resellers can generally use a trademark in their domain names, as long as they are clear of the relationship between them and the trademark holder so as to not create any confusion, and they do not register a wealth of relevant domain names and corner the market. Panels are unlikely to look kindly upon any conduct that suggests a Respondent is trying to impersonate a Complainant or otherwise take unfair commercial advantage of their marks.
So Oki Data remains an important case, but only when the facts are there.
See the extensive discussion of Oki Data in Levine, Domain Name Arbitration, Legal Corner Press, New York pp. 319-323.