SIEMENS AG v. Domain ID Shield Service CO., Limited / Maksim SPD Chervinchuk,
WIPO Case No. D2018-0364
April 16, 2018
The decision in the Oki Data case has long been seen as a major avenue by which a Respondent may be able to claim successfully that it has a right or legitimate interest in a domain name and hence defeat a claim by a trademark owner for the domain name.
Oki Data Americas, Inc. v. ASD, Inc., (WIPO Case No. D2001-0903) was a finding, in effect, that an authorised reseller of goods may be able to use a trademark in its domain name if the domain name is used for a website to sell the trademark owner’s goods. In the Oki Data case itself, the domain name was <okidataparts.com>, which could not but have given the impression to everyone that the trademark OKI DATA was being used to sell spare parts for Oki Data equipment, against the wishes of Oki Data. But as the panelist who decided the case said, the domain name could be legitimately used for selling the trademarked goods, subject to certain conditions such as disclosing the true relationship between the domain name and trademark owners.
Although UDRP decisions are not precedents, the decision has been used in many subsequent cases and has been something of a thorn in the side of trademark owners who have seen some otherwise potentially winning cases defeated.
But trademark owners are probably relieved to see a recent decision in which the Oki Data defence was rejected and the trademark owner succeeded in obtaining transfer of the domain name, although it looked initially as a regular Oki Data case where the domain name holder, the registrant, would succeed.
The decision was SIEMENS AG v. DOMAIN ID Sheild Service CO., Limited/Maksim SPD Chervinchuk (WIPO Case No. D2018-0364), where the domain name was <siemens-ua.com>.
The single panelist who decided the case held that the reason why the Oki Data defence would not succeed in this case was that the respondent had taken the “extra step” of constructing a domain name, <siemens-ua.com>, that looked as if it was running an official or authorised Siemens webs site in Ukraine, “ua” being an abbreviation for that country. The Siemens trademark was used on the site and in the Siemens colours and the site carried comments using expressions such as “our online store” and information about Siemens’ history suggesting this was a Siemens’ site. The Respondent’s name was not mentioned and there was an ineffective disclaimer. The Oki Data defence therefore did not succeed and Siemens was successful in having the domain name transferred.