Panel Takes the “Holistic Approach” to Oki Data
As noted in UDRP Perspectives at 2.3, although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the good or bad faith of a particular Respondent…. Continue reading commentary here.
We hope you will enjoy this edition of the Digest (vol. 4.44), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Panel Takes the “Holistic Approach” to Oki Data (bobcatfinaldrivesales .com *with commentary)
‣ Was the Telstra Test Properly Applied? (guidehouse .net *with commentary)
‣ Panel: Insufficient Certainty that Respondent Registered the Domain Name in Bad Faith (atlasjet .com *with commentary)
‣ Panel: Complainant’s Case Rests on Conclusory Statements of Broad Rights With Little Supporting Evidence (eugin .com)
‣ Illegal Activities Cannot Confer Legitimate Interests in Domain Names (provigil24store .shop)
Panel Takes the “Holistic Approach” to Oki Data
Doosan Bobcat North America, Inc. v. mohit jagwani, engine world usa, WIPO Case No. D2024-3191
<bobcatfinaldrivesales .com>
Panelist: Mr. Evan D. Brown
Brief Facts: The Complainant is a provider of compact construction equipment, well-known for its loaders, excavators, backhoes and other related equipment. It owns the mark BOBCAT, registered with USPTO (December 2, 1958) and in other countries. The Respondent is in the business of selling aftermarket “final drives” for a variety of heavy equipment manufacturer applications. It identifies itself as a small company that competes against the much larger Complainant by using search engine optimization to drive the sale of cheaper aftermarket products that match or exceed the quality and performance of the Complainant’s original products.
The disputed Domain Name was registered on July 6, 2020, and resolves to a website to sell aftermarket final drives that work with the Complainant’s products. By letter dated December 11, 2023, counsel for the Complainant contacted the Respondent to object to the Respondent’s registration of the disputed Domain Name and the use of the Complainant’s BOBCAT mark on the Respondent’s website. The Respondent then made certain changes to its website (inclusion of a Disclaimer; refrain from using the Complainant’s logo and more changes), in an “effort to appease” the Complainant.
The Respondent contends that it has used the disputed Domain Name in connection with a bona fide offering of goods. More specifically, the Respondent asserts that its actions satisfy all four parts of the test outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”). The Respondent further contends that its knowledge of the BOBCAT mark and its refusal to transfer the disputed Domain Name to the Complainant, does not serve as evidence of any bad faith and that the Complainant failed to demonstrate that the Respondent sought to mislead Internet users for commercial gain.
Held: A key basis for the Oki Data Test is that the defense of nominative trademark use requires a Respondent’s use of a complainant’s trademark to be “only so much as is necessary for […] identification” of that respondent’s goods or services. One may reasonably criticize the conduct the Respondent engaged in prior to hearing from the Complainant. The BOBCAT mark appeared prominently in the website header, leaving visitors possibly unsure whether they were being presented with actual BOBCAT products or aftermarket parts. One had to read carefully and make some assumptions to ascertain that the Respondent was offering aftermarket parts. But applying a holistic approach, the Panel finds on balance that the changes the Respondent made illuminate the overall bona fide offering of goods using the disputed Domain Name.
The Panel credits these activities as demonstrating the bona fide nature of the Respondent’s offering of goods – there is no dispute that the Respondent is indeed using the disputed Domain Name to offer aftermarket parts for Bobcat machinery. After hearing from the Complainant, the Respondent changed the website header to remove the prominence of the BOBCAT mark, added language that makes it clearer that the Respondent is a supplier of aftermarket parts, and made certain that a disclaimer appears on the site, intended to lessen any potential confusion. Overall, the Respondent has not engaged in the typical sorts of actions one sees with domain name registrants accused of bad-faith cybersquatting. Moreover, the Panel recognizes that this case may more accurately be characterized as a trademark dispute rather than a simple case of domain name abuse.
This involves a nuanced analysis of trademark law, including the likelihood of confusion and the scope of the Respondent’s fair use of the BOBCAT mark. It may be more appropriate for a court of competent jurisdiction to address the trademark issues involved, where a full analysis of the likelihood of confusion and other relevant factors can be undertaken. Accordingly, the Panel finds that the Respondent has demonstrated a legitimate interest in the disputed Domain Name for the purposes of the Policy, by making a bona fide offering of products – aftermarket parts for the Complainant’s machinery – and by taking significant steps to bring its conduct within the scope of what the “Oki Data” Test permits.
Complaint Denied
Complainant’s Counsel: Quarles & Brady LLP, United States
Respondent’s Counsel: Kulseth Law P.L.L.C. dba Mighty Marks, United States
Case Comment by ICA General Counsel, Zak Muscovitch:
As noted in UDRP Perspectives at 2.3, although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the good or bad faith of a particular Respondent.
As further noted in UDRP Perspectives at 2.3, a modified version of the Oki Data test has been adopted recently by some panelists that involves “a more holistic approach” to the Oki Data criteria. Under this more holistic and less rigid approach, Panels look at multiple factors including domain name composition, website content that may either confirm or deny affiliation with the Complainant as well as any other circumstances relating to the use of the domain name and the Respondent’s business. In other words, Panels employing the “holistic approach” tend to take all circumstances into account in order to determine whether the Respondent’s approach is fundamentally fair and in good faith, rather than rigidly applying the original Oki Data test in a form not adapted to the particular circumstances of the case.
To the Panel’s credit in this case, the Panel expressly adopted the “holistic” approach and stated:
“But applying a holistic approach, the Panel finds on balance that the changes the Respondent made illuminate the overall bona fide offering of goods using the disputed domain name … Overall, the Respondent has not engaged in the typical sorts of actions one sees with domain name registrants accused of bad faith cybersquatting.” [emphasis added]
Also, to the Panel’s credit, the Panelist adopted the appropriately circumspect approach to UDRP cases which involve trademark disputes rather than cybersquatting, finding, that
“This case may more accurately be characterized as a trademark dispute rather than a simple case of domain name abuse”. A core issue here is whether the Respondent’s use of the BOBCAT mark – in the disputed domain name and on the Respondent’s website – to sell aftermarket parts infringes upon the Complainant’s trademark rights. This involves a nuanced analysis of trademark law, including the likelihood of confusion and the scope of the Respondent’s fair use of the BOBCAT mark. It may be more appropriate for a court of competent jurisdiction to address the trademark issues involved, where a full analysis of the likelihood of confusion and other relevant factors can be undertaken.
Was the Telstra Test Properly Applied?
Guidehouse LLP v. Herson Sasha, NAF Claim Number: FA2410002118864
<guidehouse .net>
Panelist: Ms. Dawn Osborne
Brief Facts: The Complainant is the owner of the trade mark GUIDEHOUSE registered, inter alia, in the USA for business consultancy services since 2019 with the first use recorded as 2018. The Complainant claims that the trademark is well known in its field and the Complainant owns <guidehouse .com>. The disputed Domain Name was registered in 2024 and the Panel notes that the Domain Name does not currently resolve to an active site. The Complainant alleges that the Domain Name has not been used, so there is no bona fide offering of goods or services or a legitimate non-commercial or fair use. The Complainant further alleges that the Domain Name has been registered and used in opportunistic bad faith as a typosquatting registration and there are concerns as to possible phishing. The Respondent failed to submit a Response in these proceedings.
Held: The Domain Name is being passively held. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005) (Where the panel found in active use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i).) The Respondent has not answered this Complaint and has not rebutted the prima face case evidenced by the Complainant as set out herein. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name.
The Domain Name is being passively held. Passive holding of a domain name containing a third-party mark with a reputation without a legitimate excuse is commonly held to be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith.
Transfer
Complainant’s Counsel: Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, USA
Respondent’s Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
As written about numerous times in the Digest, the Telstra test is often misunderstood by Panelists. The term, “passive holding” has become short-hand for the finding in Telstra that non-use of a domain name can nevertheless be considered “bad faith use” under the Policy. But to reach this conclusion, Telstra requires much more than mere non-use. As noted in UDRP Perspectives at 3.7, the Telstra test requires five criterion to be met:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
As further noted in UDRP Perspectives, crucially, the Telstra test requires a strong reputation of the mark and the impossibility of conceiving any plausible or actual good faith use of the particular domain name. Such a determination would generally arise only where the disputed domain name corresponds to a particularly distinctive and famous mark. Where a domain name is unused, it may be considered to be “passively held” but that alone does not amount to bad faith use absent meeting the narrow requirements of the Telstra test.
Crucially, when considering passive holding, Panels must contemplate whether there is any plausible good faith use for the disputed domain name. Where there is, the Telstra test will not have been met and passive holding will not amount to bad faith use. In the case at hand, the Panel’s entire analysis of Registration and Use in Bad Fatih is as follows:
“Registration and Use in Bad Faith
The Domain Name is being passively held. Passive holding of a domain name containing a third party mark with a reputation without legitimate excuse is commonly held to be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith.”
This appear to be an abbreviated recital of the Telstra test as explained above, in that the above passage appears to be lacking the analysis required when properly applying the Telstra test. That is not to say that the Panelist’s conclusions and disposition of the case were necessarily wrong, but it does take more work to get to that conclusion and disposition than was apparent from the text of the decision in this case.
Panel: Insufficient Certainty that Respondent Registered the Domain Name in Bad Faith
İflas halinde ATLASJET HAVACILIK ANONİM ŞİRKETİ v. Vahap Dogan, WIPO Case No. D2024-3548
<atlasjet .com>
Panelist: Dr. Kaya Köklü
Brief Facts: The Complainant is an airline that was founded in 2001 in Türkiye and has been in insolvency proceedings since 2020. The Complainant is the registered owner of the Turkish trademark for ATLASJET, registered on August 28, 2007. The Complainant used its ATLASJET trademark until 2014, and as of 2015, it predominantly switched its use to its other brand, “Atlasglobal,” which is also protected by various Turkish trademark registrations.
The disputed Domain Name was initially registered to the Complainant on May 12, 2001. However, on June 16, 2022, two years into the Complainant’s insolvency proceedings, the Respondent acquired it from an online auction for US $5,650. Since then, the domain has redirected users to the Respondent’s commercial website for water jet cutters. The Respondent contends that he has offered a number of water jet cutters under the brand “AtlasJet” for many years. He asserts that his products are “known well in the market”. For evidence purposes, the Respondent provided screenshots of his recent commercial website indicating the use of “AtlasJet” for his water jet cutters. He also provided a copy of a flyer with a prominent reference to “AtlasJet”, inviting customers to a live water jet cutting demonstration on November 15, 2021.
Held: The Panel notes that the Respondent acquired the disputed Domain Name by way of an online auction for a considerable amount about two years after the start of the insolvency proceedings against the Complainant. Before the acquisition of the disputed Domain Name by the Respondent, the Complainant must have discontinued the renewal of its previously owned disputed Domain Name. As the Complainant did not provide any reasoning for the discontinued renewal, it remains unclear whether this happened deliberately or unintentionally. In addition, the Panel finds that the case file does not indicate with sufficient certainty that the Respondent registered the disputed Domain Name in bad faith to target the Complainant and/or its trademark rights. Quite the contrary, the Panel notes that the disputed Domain Name was registered in the name of the Respondent about seven years after the Complainant stopped actively using its ATLASJET trademark for its flights and at a time when the insolvency proceedings against the Complainant were already pending for about two years. This already makes it doubtful that the Respondent is a cybersquatter who registered the disputed Domain Name in bad faith in order to target the Complainant.
The Panel does not ignore that the documents provided by the Respondent, particularly the screenshots of his recent website, are not bulletproof and do not provide clear evidence of a long-standing use of “AtlasJet” as a brand for water jet cutters, as claimed by the Respondent. However, it cannot be denied that ALTASJET comprises the term “jet” which is a word component of “water jet cutters”, and it is undisputed that the Respondent is active in the field of water jet cutters, which is different to the business field in which the Complainant was active. It is, therefore, possible and in any case not inconceivable, that the Respondent has registered the disputed Domain Name independently and detached from any trademark rights of the Complainant in order to use “AtlasJet” as a legitimate identifier for his water jet cutters. In light of the above and despite some inconsistencies in the Respondent’s filings, the Panel does not see sufficient and reliable indications in the case file to find bad faith registration, for the purposes of the Policy, by the Respondent. As a consequence, the Panel finds the third element of the Policy has not been established.
Complaint Denied
Complainant’s Counsel: BARKALE HUKUK BÜROSU, Türkiye
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch:
As noted in UDRP Perspectives at 0.1, the UDRP is not intended to resolve all kinds of disputes. Rather, it is only designed and intended for clear-cut cases of cybersquatting. Other disputes are not intended to be resolved by the expedited and administrative nature of the UDRP procedure.
The Policy requires Panels to discern those cases appropriate for resolution and to dismiss those that are not. To the Panel’s credit in this case, the Panel took an appropriately circumspect approach to this case and dismissed it after finding it “doubtful that the Respondent is a cybersquatter” and “not inconceivable that the Respondent registered the Domain Name independently and detached from any trademark rights of the Complainant… as a legitimate identifier”.
The Panel concluded that “In light of the above and despite some inconsistencies in the Respondent’s filings, the Panel does not see sufficient and reliable indications in the case file to find bad faith registration, for the purposes of the Policy, by the Respondent.” That is precisely the appropriate approach for Panelists to take. As noted in UDRP Perspectives at 0.2, although the UDRP employs the civil standard of a “balance of the probabilities” or “preponderance of the evidence”, if a Panel’s level of certainty is low – even if it is above a notional 50.1% level of certainty, that leaves 49.9% uncertainty, which amounts to not much more than a coin flip, and in such cases, the Panel’s main consideration may not be the standard of proof per se, but instead the proper scope of the Policy which is limited to clear cases.
Panel: Complainant’s Case Rests on Conclusory Statements of Broad Rights With Little Supporting Evidence
LUARMIA, S.L. v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2024-3405
<eugin .com>
Panelist: Mr. Georges Nahitchevansky
Brief Facts: The Complainant is a provider of medical assistance services and, in particular, assisted reproduction medical services and operates clinics in Spain and Portugal. The Complainant owns, through an assignment in 2011, a figurative trademark for EUGIN in Spain (issued in 1998) and a trademark for the EUGIN mark in the EU (issued in 2009). The Complainant contends that it has used the EUGIN mark for 25 years in Spain and since 2005 in the European Union and that its EUGIN clinics have now become leading clinics for its assisted reproduction medical services. The Complainant also owns and uses the Domain Names <eugin .es> and <eugin .co .uk> to provide information concerning the Complainant and its services. The disputed Domain Name was registered on October 25, 2003, under Privacy and currently resolves to the page with pay-per-click links to fertility and IVF services.
The Complainant alleges that the disputed Domain Name is being used by the Respondent to simply redirect web users to a website with likely pay-per-click links to other providers of fertility services to “unlawfully benefit from the Complainant’s Trade Marks and their attractiveness and well-known character within the assisted reproduction medical services sector”. The Complainant further alleges that the Respondent’s current use of the disputed Domain Name for a “link farm parking page advertising the services of third parties” who compete with the Complainant establishes the Respondent’s bad faith registration and use. The Complainant maintains that given this use of the disputed Domain Name by the Respondent, there can be no doubt that the Respondent is intentionally using the disputed Domain Name, which is based on the EUGIN mark, to attract web users to the Respondent’s website. The Respondent did not submit a Response.
Held: The Complainant’s EU registration is from 2009, which is well after the disputed Domain Name was registered; therefore, the Complainant’s entire case rests on its Spanish figurative mark registration from 1998. Notably, the trademark registration documents provided by the Complainant show that the 1998 Spanish registration in question was assigned to the Complainant on January 27, 2011. No details regarding this assignment of this registration to the Complainant in 2011 are provided by the Complainant, including who was the prior owner and what the use of the EUGIN mark had been made prior to the assignment. In all, the Complainant’s case rests on conclusory statements regarding its broad rights with little supporting evidence. Conclusory allegations or assertions that are unsubstantiated with specific evidence are entitled to little or no weight, see WIPO Overview 3.0 in sections 1.3 and 3.1.
While the Panel notes that the current use of the disputed Domain Name is likely being done in bad faith to take advantage of the Complainant’s current rights in the EUGIN mark for the profit of the Respondent, what is lacking here is evidence that the Respondent registered the disputed Domain Name in 2003 to target the Complainant or more appropriately Complainant’s predecessor in interest in the EUGIN mark. Given that the Complainant has not established the extent of its rights in the EUGIN mark prior to October 2003, it is hard for the Panel to conclude that the registration of the disputed Domain Name by the Respondent in 2003 was made to take advantage of any claimed rights in EUGIN in Spain in 2003. Simply put, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name in 2003 was to profit from or exploit the Complainant’s trademark.
Complaint Denied
Complainant’s Counsel: Ryan Thomas and Lisa Greenwald-Swire of Fish & Richardson P.C., Minnesota, USA
Respondent’s Counsel: No Response
Illegal Activities Cannot Confer Legitimate Interests in Domain Names
Cephalon, Inc. v. Bill Milligan, CAC Case No. CAC-UDRP-106898
<provigil24store .shop>
Panelist: Mr. Alistair Payne
Brief Facts: The Complainant, established in 1987, is a global biopharmaceutical company dedicated to discovering, developing and bringing to market medications to improve the quality of life of individuals worldwide. In 2011, became part of the Teva Group, one of the top pharmaceutical groups in the world, which operates in 60 countries worldwide. The Complainant’s PROVIGIL product is a prescription medicine indicated to improve wakefulness in adult patients with excessive sleepiness associated with narcolepsy, obstructive sleep apnoea, or shift work disorder. The Complainant owns numerous trade mark registrations worldwide for its PROVIGIL trade mark including the US trademark (September 10, 1996) and International trademark (June 28 1978).
The disputed Domain Name was registered in August 2024 and resolves to a website that promotes the benefits of the Complainant’s PROVIGIL product and provides information about it and also features a photograph of the Complainant’s product including its mark and name. The website also includes a link to enable website visitors to buy the product online. The link takes people to the website of the “Canadian Drug Store” at <coolhealstore1 .shop> which according to the Complainant is an illegal pharmacy that sells prescription medicines without requiring a prescription. No administratively compliant Response has been filed.
The Complainant alleges that the disputed Domain Name currently resolves to a webpage that solely refers to the Complainant’s pharmaceutical product and provides a huge ‘Buy Now’ button that directs visitors to another .shop site, which the Complainant suspects to be an unauthorised internet pharmacy that does not follow the laws and regulations of the various countries in which it operates. The Complainant further alleges that such use neither constitutes demonstrable preparations to make a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed Domain Name.
Held: The use of the disputed Domain Name to divert Internet users to an online pharmacy based in Canada at which they can purchase a pharmaceutical product which could otherwise only be procured by prescription in that country amounts to illegal activity. Past panels have held that the use of a domain name for illegal activity, here claimed to be using the disputed Domain Name to divert users to a website for what appears to be an illegal online pharmacy which dispenses the Complainant’s product without any prescription, can never confer rights or legitimate interests on a respondent. Further, the disputed Domain Name was registered in August 2024 many decades after the Complainant registered its trade mark for PROVIGIL. The fact that the disputed Domain Name resolves to a website that is presented as if it is affiliated with or endorsed by the Complainant and which features and describes its PROVIGIL product, strongly suggests that the Respondent was well aware of the Complainant’s mark and product when it registered the disputed Domain Name.
The Respondent has not attempted to respond to the Complainant’s submissions in this regard and it appears to the Panel that the sale of the Complainant’s PROVIGIL product in this manner without a prescription from an online site in Canada is most likely to be illegal and, therefore, in bad faith under the Policy. It is apparent that the disputed Domain Name has been used by the Respondent to divert Internet users to its website which features the PROVIGIL mark and based on its look and feel appears as if it is affiliated with or has been endorsed by the Complainant. This is all in circumstances that the Complainant has never authorised such use and amounts to the Respondent having used the disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks in terms of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Respondent has registered and used the disputed Domain Name in bad faith.
Transfer
Complainant’s Counsel: SILKA AB, Sweden
Respondent’s Counsel: No Response
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.