Unauthorized reseller of possible gray market goods had rights or legitimate interests in disputed domain name

The Panel denied the Complainant’s efforts to have the disputed domain name <plastidipsingapore.com> transferred, holding that under the analysis found in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, the Respondent had rights or legitimate interests in the disputed domain name.

The WIPO Overview 2.0 distills the Oki Data test and instructs that:

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include [1] the actual offering of goods and services at issue, [2] the use of the site to sell only the trademarked goods, and [3] the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must [4] also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.

The web site at the disputed domain name in this case did not disclose the Respondent’s relation with the Complainant. That notwithstanding, the Panel was of the view that the dispositive element here was “that not only authorized but also unauthorized resellers may fall within [the] Oki Data principles.” As the Complainant stated, the Respondent did not have a direct relation with it. Therefore there was no relation between the Complainant and the Respondent that the Respondent should have disclosed on its web site.

The Complainant initially alleged that the Respondent was selling counterfeit goods, but retracted that allegation in an additional submission. What appeared to be the case, according to the Panel, was that the Respondent was selling genuine products that may or may not have been gray market goods. To the extent that this activity was legal, it was legitimate and could not be considered to be the sort of cybersquatting that the Policy was created to prevent.

Plasti Dip International, Inc. v. Yong Quek Peow, Case No. FA1601001658830 (Nat. Arb. Forum, Feb. 24, 2016)

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.