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Recent Case Notes & Commentary

OKI DATA - Important, but it has Limits

The decision in Oki Data was certainly significant and has been given considerable application. In simple terms, it says that a domain name holder may, subject to certain conditions, have a right or legitimate interest in the domain name if it is a reseller of the Complainant-trademark owner’s goods and uses the domain name for that purpose. Thus, if the trademark is FORD, the Respondent is a Ford dealer or reseller and registers and uses the domain name <>, it may have have the right to keep and use the domain name even against Ford's wishes.

Oki Data has been used and applied widely to cover various arrangements between the supplier- trademark owner on the one hand and resellers, distributors and service providers on the other. The practical application of the decision has depended on what have been referred to as the Oki Data “principles”. Some decisions have swung on whether the case comes within or falls outside those principles.

But a recent decision[1], Blue Diamond Growers v. L Wood (FA1704001728775 - June 7, 2017), has shown that there are limits to how far these principles can be applied. 

Blue Diamond is the world’s largest almond processor and marketer and has a series of trademarks for BLUE DIAMOND. Mr Wood is an almond grower in California and sells his product to Blue Diamond. He registered a series of domain names like <>[2] and he adopted the novel approach of registering more domain names of the same sort whenever Blue Diamond’s lawyers sent him cease and desist letters telling him to stop doing it. [1] The .us domain name Policy is similar, but not identical, to the UDRP.

In support of his case that he had a right or legitimate interest in the domain names, he argued that he was a supplier of almonds to Blue Diamond and for good measure he added that he only registered and used the domain names to benefit Blue Diamond by maintaining the integrity of its brand. He also argued, perhaps with an eye on one of the Oki Data principles, that he had and would only use the domain names to promote the almonds that he grew exclusively for Blue Diamond.

This latter argument turned out not to be supported by the evidence, which showed that the domain names resolved to websites selling rival almonds and almond products and other unconnected products.

The panel unanimously rejected any notion that Mr. Wood had a right or legitimate interest in the domain names simply because he was a supplier, as “The Panel…can find no prior UDRP case which recognises that sort of commercial relationship -- as opposed to being a reseller, distributor or service provider -- as creating rights or legitimate interests..." and there was nothing in the evidence of the contractual relationship to give him the right to use Blue Diamond’s trademark.

Oki Data remains an important decision on rights and legitimate interests. But the Blue Diamond case shows there are limits.

[1] The Hon. Neil Brown QC was a member of the 3-person unanimous panel that decided this case.

[2] The .us domain name Policy is similar, but not identical, to the UDRP.

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