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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Oki Data Americas, Inc. v. ASD, Inc.

Case No. D2001-0903 (WIPO, Nov. 6, 2001)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel holds that an authorized sales and service agent has a "legitimate interest" in a domain name containing the mark of the product it sells and services on Complainant's behalf and accordingly permits Respondent to continue to use the domain name in its resale activities over the mark holder's objection.

Complainant Oki Data Americas Inc. has an exclusive license to use the federally registered trademark "Oki Data" in the United States.  Complainant uses this mark to support its business of selling printers, fax machines and other computer peripherals.

Respondent ASD, Inc. is an authorized Oki Data dealer which both sells parts for Oki Data products purchased from Complainant, and services Oki Data equipment.  To assist its promotion of these activities, ASD registered the domain name okidataparts.com.  At this site, ASD offers for sale only parts and services for Oki Data products.  It does not offer to sell or service products manufactured by any of Oki Data's competitors.  In addition, the Panel noted that "the web site prominently discloses that it is merely a repair center and not Oki Data itself."  Oki Data did not, however, authorize ASD to use the "Oki Data" mark in the domain at issue.

On these facts, the Panel held that ASD had a "legitimate interest" in the domain sufficient to defeat Oki Data's UDRP claim seeking to compel the transfer of the domain to it.

Under the UDRP, a domain registrant cannot be compelled to transfer a domain in which it has a "legitimate interest."  Under Paragraph 4(c)(i), a registrant has a "legitimate interest" in a domain if, prior to the commencement of the dispute, it used the domain name "in connection with the bona fide offering of goods or services."  To constitute a "bona fide" offering, stated the Panel, the domain registrant must meet the following requirements:

Respondent must actually be offering the goods or services at issue.

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Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

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The site must accurately disclose the registrant's relationship with the trademark owner …

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The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Finding that Respondent's use complied with each of these requirements, the Panel concluded that its use of Complainant's mark was "bona fide," within the meaning of the UDRP, that Respondent had a "legitimate interest" in the domain name at issue, and accordingly denied Complainant's request to have the domain name at issue transferred to it.

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