Philip Morris Products S.A. v. Baryshev Ruslan
WIPO Case No. D2019-1727
September 17, 2019
An important, frequently referenced case, Oki Data, has made another appearance in a recent UDRP dispute. The Oki Data case is important because it outlines the circumstances in which a respondent can successfully argue that it has a right or legitimate interest in a domain name, despite it containing the Complainant’s trademarks. These circumstances, dubbed the Oki Data Test, generally apply to distributors, service, repair or other agents of the trademark holder, and outlining the principles a Respondent must satisfy to be considered as making a bona fide offering of goods and/or services:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.[1]
In the following case brought by tobacco giant Philip Morris, the Respondent, (who did not submit a formal response) appeared to be a repairer of the Complainant’s IQOS products, operating at the domain <remont-iqos.com> (Russian for repair-iqos).
Despite the lack of the Response, the Complainant still had to prove all three elements of the UDRP to get the domain name transferred, and as such, the Panel used the Oki Data Test to determine the bona fide nature of the Respondent’s business.
While the Respondent’s website did contain a disclaimer clarifying the relationship between it and the Complainant, the Panel found that it was neither prominent or clear enough to be effective and communicate to the reader who owned the IQOS trademark. Such a disclaimer fails the element (iii) of the Oki Data Test, and as such the Respondent was found to have not made a bona fide offering of goods and services.
With the Oki Data principles not applying in this case, the Complainant was able to succeed under the second element. It was also able to convince the panel to find in its favour on the third element, and the domain was consequently transferred.
While the Oki Data case remains important in UDRP disputes and provides a useful defence for Respondents, as things stand today, Respondents have to be careful to produce evidence that they come within the principles, and until this is done, successful reliance on Oki Data will not be as frequent as it could be.
[1] Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
See the extensive discussion of Oki Data in Levine, Domain Name Arbitration, Legal Corner Press, New York pp. 319-323.