In this case study video, I explain how a reseller, distributor, or service provider may be able to use another company's trademark in its domain name without violating the Uniform Domain Name Dispute Resolution Policy (UDRP).
In the UDRP case I discuss, Sub-Zero lost a case against the registrant of the domain name <CentricSubZeroRepair.com> because, as the panel wrote, "Respondent uses the Domain Name for its business of repair of SUB-ZERO appliances, which is consistent with what is reflected in the Domain Name."
The UDRP decision applied the four “Oki Data” factors set forth in a landmark UDRP decision almost twenty years ago. Specifically, the Oki Data test says that a domain name registrant may have rights or legitimate interests if the following four factors apply:
The respondent must actually be offering the goods or services at issue.
The respondent must use its website to sell only the trademarked goods or services.
The site must accurately and prominently disclose the registrant’s relationship with the trademark holder.
The respondent must not try to “corner the market” in domain names that reflect the trademark.
In the <CentricSubZeroRepair.com> case, the registrant of the domain name said that he was the owner of two companies, including a limited liability company known as Centric Subzero Repair, LLC, and that he used the domain name in connection with that business. And the website using the domain name said, on its home page: “We are an independent repair company and are not affiliated in any way with the Sub-Zero… appliance manufacturer or any of its distributors.”
As I explain the video, the UDRP panel had no difficulty finding that the domain name was confusingly similar to the SUB-ZERO trademark under the first element of the UDRP, even though it contained two words – “centric” and “repair” – in addition to the SUB-ZERO trademark itself. But the case turned on the second element of the UDRP, rights or legitimate interests.
Among other things, the panel wrote:
Respondent appears to use the Domain Name for a legitimate purpose and in respect of a bona fide offering of services, namely the repair services of SUB-ZERO-branded products….There is nothing in the content of Respondent’s website which suggests affiliation with or endorsement by Complainant.
While every dispute has to be evaluated on its own facts, this Sub-Zero decision is an important reminder that resellers, distributors, and service providers can, under certain circumstances, use a company’s own trademark in a domain name. And by citing a nearly 20-year-old UDRP decision, the panel in this case emphasized the importance of precedent in domain name disputes – precedent that trademark owners should understand and evaluate, as I do with my clients – in deciding whether a UDRP complaint is likely to succeed.
