Domain name: <collincollegebooks.com>
This note has been re-written in view of another recent case involving the Oki Data issue: Swarovski Aktiengesellschaft v. Gentian, tian wen, (WIPO Case No. D2012-01590) which should be read. In the Collin County case, the Complainant won. In other words, the Oki Data issue was not successful.
Relying on the Oki Data defence can sometimes enable a Respondent to show that it has a right or legitimate interest in the domain name on the basis that it was a distributor of the Complainant’s products and acquired the domain name in pursuit of that role. As in all cases, however, the outcome is determined by the facts.
The Collin County case
In the Collin County case, the facts did not measure up to success on the Oki Data principle.
The Complainant is a government college entity and the Respondent a retailer of college books and clothes. The Respondent runs the businesses Off Campus Books and Cougar Books, some of the books it sells are prescribed by the college and some of the clothing bears the name Collin College.
The Complainant had filed several applications with the USPTO for service marks in COLLIN COLLEGE, but they had not yet been granted. The Complainant also claimed common law rights.
The Respondent registered and used the domain name <collincollegebooks.com> which was diverted to its principal website for Cougar books. It claimed that the Complainant knew for several years that the Respondent had been doing this and using the process to sell the books and clothing referred to.
The case for the common law trademark was accepted by the panelist as the Complainant had used the name for several years and the Respondent clearly knew it was an identifier.
The panel was prepared to treat the Respondent as an authorised reseller as it sold books that were prescribed by instructors at the college. But it was held that it had not met the requirements of Oki Data, as there was no indication that Respondent sold only “Complainant-branded goods or (was) the exclusive source of books for Complainant’s courses…”
Another Oki Data criterion that the panel said Respondent did not meet was that the website should have disclosed accurately “the registrant’s relationship with the trademark owner;…”. The relationship between the parties in the present case was not disclosed, “…so there is no basis for the Panel’s inferring a right so to use Complainant’s name under the Oki Data test. Consent from Complainant to use Complainant’s name in this manner is required.”
There was no evidence that express consent was ever given. Could consent be inferred? No, it could not: the Complainant’s counsel had objected soon after the registration of the domain name had taken place.
The fact that this complaint by the Complainant had not been followed up for 21 months then became the basis for the Respondent’s defence of laches. This was rejected on the ground that “Laches is not available in a Policy proceeding…”, citing Mile, Inc. v. Michael Burg (WIPO Case No. D2010-2011) and the WIPO Overview, paragraph 4.10. No reference, however, was made to the decision in The New York Times Company v. Name Administration Inc. (BVI) (NAF Case No. FA1009001349045) (November 17, 2010) that laches is “a valid defence in any domain dispute where the facts so warrant.” It was also held that there was inadequate evidence of the loss that the Respondent had incurred because of the delay.
All of these elements militated against the Respondent, which lost the whole proceeding and the tribunal ordered that the domain name be transferred to the Complainant. Undoubtedly, the Respondent lost because of the lack of evidence.
The Swarovski Case
In the Swarovski Case, decided on March 22, 2012, the Complainant also won and the Oki Data defence was again unsuccessful, this time also on the ground that evidence on an essential element was missing.
The third Oki Data element was that – The site 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 site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., (WIPO Case No. D2001-0211) (April 25, 2001).
On that issue the panelists in the Swarovski Case, the panel found that the evidence was just not there. The panel said:
“However, the Respondent manifestly fails the third requirement. Indeed, rather than accurately disclosing the relationship of the Respondent’s website with the trademark owner, the website positively misrepresents this relationship. The Respondent’s website states that it has ‘official authorisation’ which is false, and is calculated to deceive on-line purchasers. This deception is compounded by the Respondent’s prominent use of the Complainant’s SWARVOSKI and swan device trademarks. This representation of official authorisation as well as the prominent use of trademarks suggests that the trademark owner has approved the Respondent’s sales of its products, and is therefore probably exercising some form of quality control over the Respondent’s sales, and may accept responsibility for defective products of unsatisfactory service. The false representation of the authorisation or approval of the trademark owner is a very serious form of consumer deception in relation to an on-line business where Internet users always face problems separating legitimate from fraudulent sellers.”
These two cases illustrate yet again, that these case are won or lost on the evidence. Care must always be taken to adduce all relevant evidence and not to rely simply on assertions. This applies, of course, not only to cases where a Respondent wants to succeed on the Oki Data defence, but in all cases.