The “Oki Data Test” describes one of the earliest and most important questions ever addressed under the Uniform Domain Name Dispute Resolution Policy (UDRP): Can an authorized sales or service agent of trademarked goods use the trademark at issue in its domain name?
The test was set forth in a decision that’s now 20 years old but is still very relevant today.
I discuss the case in detail in a UDRP case study video.
The UDRP case involved a dispute over the domain name <okidataparts.com> and was filed by Oki Data Americas (a well-known brand in the computer printer industry) against a company called ASD, Incorporated, in Tennessee (which sold parts for Oki Data products, purchased from Oki Data’s distributors, and offered repair services as an authorized Oki Data repair center).
ASD said that it was engaging in a fair use of the domain name and, in fact, as an authorized dealer of Oki Data products, it said that it must be able to tell consumers that it sells and repairs those products. But Oki Data asserted that its agreement with ASD did not give ASD any rights to the OKI DATA trademark, including in a domain name.
After quickly finding that the <okidataparts.com> domain name was confusingly similar to the OKI DATA trademark under the first element of the UDRP’s three-part test, the panel wrote a concise and important analysis under the second element, which essentially provides a defense to a domain name registrant that has rights or legitimate interests in the domain name. The panel focused on paragraph 4(c)(i) of the UDRP, which says that a registrant has such rights if it has used the disputed domain name “in connection with a bona fide offering of goods or services.”
Specifically, as I explain in the video, the panel said that a registrant must meet at least four criteria to establish a bona use:
First, “Respondent must actually be offering the goods or services at issue.”
Second, “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.”
Third, “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.”
And fourth, “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.”
The panel then concluded that the respondent, ASD, had met all of those criteria, adding:
Respondent is an authorized seller and repair center, is using the okidataparts DOT com site to promote only OKIDATA goods and services, and prominently discloses that it is merely a repair center, not Oki Data itself. It has not registered numerous okidata-related domain names, and has not improperly communicated with Oki Data customers.
As a result, and because every trademark owner must prevail on all three elements of the UDRP test, the panel denied Oki Data’s request for a transfer and ASD was allowed to keep its <okidataparts.com> domain name.
Since this case was decided in 2001, the fair use test that it created has often been referred to as the “Oki Data test” and has been cited in quite a few UDRP decisions through the years.
But, the decision doesn’t give every reseller or repair center the right to use someone else’s trademark, only under certain circumstances. And the criteria are moot if the trademark owner and the reseller have an agreement (express or otherwise) that forbids use of domain names that incorporate the relevant trademark.
