WIPO Arbitration and Mediation Center


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

Case No. D2001-0903

1. The Parties

The Complainant is Oki Data Americas, Inc., a corporation organized under the laws of the State of Delaware, USA, with a place of business at 2000 Bishops Gate Road, Mount Laurel, New Jersey 08054-4620, United States of America. Complainant is represented by Akin, Gump, Strauss, Hauer & Feld, L.L.P.

The Respondent is ASD, Inc., an entity with a place of business at 613 West Hwy. 11E, New Market, Tennessee 37820, United States of America. Respondent appears pro se.

2. The Domain Name and Registrar

The domain name at issue is <okidataparts.com> (the “Domain Name”). The Domain Name is registered with Network Solutions, Inc. (“NSI”).

3. Procedural History

The Complainant initiated this proceeding by filing a Complaint by email with the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) on July 16, 2001. On July 17, 2001, the Center received a hard copy of the Complaint. The Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Following this review, the Center notified Complainant that its initial submission suffered a formal deficiency. Complainant submitted an Amended Complaint on August 2, 2001, by e-mail and on August 6, 2001, in hard copy, rectifying the Complaint's procedural deficiency. The Center notified Respondent of the commencement of this proceeding on August 8, 2001.

On August 23, 2001, Respondent submitted its timely Response to the Complaint by e-mail; the hard copy Response was received on August 24, 2001.

On September 7, 2001, the Complainant submitted a Supplemental Submission to the Center by fax. This Proposed Supplemental Submission was received by e-mail on September 8, 2001, and in hard copy on September 11, 2001.

On September 27, 2001, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.

On October 2, 2001, after reviewing Respondent's Response, the Panel noticed that several exhibits to which the Response referred were not attached. The Panel directed the Center to ask Respondent to resubmit these attachments. Respondent faxed the attachments to the Center on October 10, 2001.

4. Factual Background

Complainant develops, manufactures and sells a full line of computer peripherals and accessories, including printers, facsimile machines and parts thereof. Complainant's products are available for sale around the world.

The “OKIDATA” trademark is registered in the United States to Oki Electric Industry Co., Ltd. for computer programs, printers and parts thereof. U.S. Registration No. 1,336,348. Oki Electric has granted Complainant an exclusive license to use the mark in the United States.

Respondent sells parts for OKIDATA products (purchased from Complainant's distributors) and offers repair services as an authorized Oki Data Repair Center. Respondent is listed on the Oki Data web site as an authorized Oki Data dealer, and has been given access to a password-protected part of Oki Data's website, the “Business Partner Exchange,” which provides graphics for use on web sites promoting OKIDATA products. Respondent registered the Domain Name with NSI on August 16, 2000.

5. Parties' Allegations

Complainant asserts that Respondent's registration and use of the Domain Name violates Complainant's rights in the registered trademark “OKIDATA”. Complainant alleges that <okidataparts.com> is confusingly similar to and incorporates an unauthorized use of the OKIDATA trademark, and that the only difference between the mark and the Domain Name is the addition of the word “parts”.

Complainant alleges that Respondent has no legitimate interest in the Domain Name because Respondent has no trademark rights in or license to use the OKIDATA mark. Complainant states that Respondent's agreement to provide repair services for OKIDATA products contains no trademark license or authorization to use the OKIDATA mark as a domain name.

Complainant also contends that the Domain Name has been registered in bad faith. In support of this assertion, Complainant argues, in part, that the Domain Name was registered to create initial interest confusion among consumers, attracting people to the Domain Name instead of to the Oki Data web site, and that Respondent's use of the OKIDATA mark in its domain name without a license or other authority is evidence of bad faith in itself.

In defense of its registration of the Domain Name, Respondent does not deny Complainant's claim that the Domain Name is similar to the OKIDATA trademark. Instead, Respondent alleges that, although it used the OKIDATA mark in its domain name, that use does not indicate or imply that its site is owned or controlled by Complainant.

Respondent asserts that it has a legitimate interest in the Domain Name based on its sale and repair of OKIDATA products and parts. Respondent alleges that it is an authorized Oki Data Repair Center, and that one of its technicians has received certification from Complainant authorizing him and Respondent to repair and sell OKIDATA products. Respondent claims that it chose to service and sell OKIDATA products because of those products' prominence in the world market for printers. Respondent states that it does not use the OKIDATA name to promote or sell products manufactured by competitors of Complainant.

Respondent denies that it registered the Domain Name in “bad faith.” Respondent alleges that it was fair for it to presume that Complainant did not want to register the Domain Name. Respondent further alleges that, as an authorized dealer of OKIDATA products, Respondent must be able to tell consumers that it sells and repairs those products. Respondent claims that Complainant gave Respondent access to “web art” containing the OKIDATA mark for use on Respondent's web site, and that Complainant's counsel did not object to Respondent's use of those logos on their site. Respondent further states that neither its dealer agreement nor Complainant's web site contains any prohibition on registration of domain names containing Complainant's marks. Respondent finally contends that Complainant never demanded that Respondent cancel its Domain Name registration, and that Complainant never offered to absorb the cost of obtaining a domain name transfer.

6. Discussion

A. Complainant's Supplemental Submission

Before reaching the merits, the Panel must decide whether to consider Complainant's September 7, 2001 Supplemental Submission, and what weight to accord it. Rule 12 of the Rules unambiguously provides that only the Panel may request further submissions: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The Rules make no provision for a party to file an additional submission without leave of the Panel.

This Panel has written extensively about the improper filing of supplemental submissions. See, e.g., Pacific Fence & Wire Co. v. Pacific Fence, WIPO Case No. D2001-0237 (WIPO June 11, 2001). In general, such submissions are appropriate only if they raise new facts or law, not reasonably available (or foreseeable) at the time of the party's initial submission. They are not to be used to simply reply to Respondent's arguments. Magnum Piering Inc., v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan 29, 2001).

In this case, the Panel rejects the Complainant's Reply. Most of the Reply is simply an effort to reargue the points made in the Complaint. The only new fact alleged – that Respondent had changed the OKIDATA logo on its website to OKI – is readily apparent to the Panel, on its own, and in any event does not affect the Panel's decision. Accordingly, the Panel has disregarded Complainant's Reply.

B. Analysis of the Complaint.

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the Domain Name; and

(iii) the domain name has been registered and used in bad faith.

a. The Domain Name is Identical or Confusingly Similar to Complainant's Trademark.

There can be no question but that the Domain Name is confusingly similar to Complainant's OKIDATA mark for purposes of the Policy. Respondent's Domain Name incorporates in its entirety the OKIDATA mark, which is registered in the U.S. Patent and Trademark Office and thus is entitled to a presumption of validity. EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047 (WIPO Mar. 24, 2000). As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (WIPO Apr. 9, 2000) (“parts” added to mark EAUTO in <eautoparts.com>); Caterpillar Inc. v Off Road Equipment Parts, WIPO Case No. FA0095497 (NAF Oct. 10, 2000) (“parts” added to mark CAT in <catparts.com>); Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D2000-0995 (WIPO Nov. 13, 2000) (“-parts” added to mark KOMATSU in <komatsu-parts.com>).

The Panel rejects Respondent's argument that no one could be confused because the site itself explains that Respondent is not owned or controlled by Complainant. The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors. See Wal-Mart Stores, Inc. v. MacLeod, Case No. D2000-0662 (WIPO Sept. 19, 2000).

b. Complainant Fails to Show that Respondent Does Not Have a Legitimate Interest in the Domain Name.

This case raises the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name.

Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Here, there is no dispute concerning Respondent's status: It is an authorized Oki Data repair facility, and has been offering OKIDATA goods and services since prior to the commencement of this case. The only issue before the Panel, then, is whether Respondent's offerings may be characterized as “bona fide.”

To be “bona fide,” the offering must meet several requirements. Those include, at the minimum, the following:

- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).

- 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. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).

- 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. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).

- 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. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan. 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

In this case, Respondent's conduct meets all these factors. Respondent is an authorized seller and repair center, is using the okidataparts.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.

Complainant has not presented any other evidence that undermines the bona fides of Respondent's use. Accordingly, the Panel finds that the Respondent, as an authorized sales and repair dealer for Complainant's goods, has a legitimate interest (under the Policy) in using the Domain Name to reflect and promote that fact. See, e.g., Columbia ParCar Corp. v. S. Burstas GmbH, WIPO Case No. D2001-0779 (WIPO Aug. 23, 2001); ABIT Computer Corp. v. Motherboard Superstore, Inc., WIPO Case No. D2000-0399 (WIPO Aug. 8, 2000); Weber-Stephen Products co. v. Armitage Hardware, WIPO Case No. D2000-0187 (WIPO May 11, 2000). See also K&N Engineering, Inc. v. Kinnor Services, WIPO Case No. D2000-1007 (WIPO Jan. 19, 2001) (finding that the use of a manufacturer's mark in a Domain Name merely “provide[s], via an electronic medium, the advertising and sales functions related to the business of an authorized distributor of the Complainant”).

It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. The Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470 (WIPO Jan. 5, 2001). If trademark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations. In the absence, however, of some element of illegitimacy, they should not use the Policy to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services.

c. Respondent Has Not Used and Registered the Domain Name in Bad Faith.

In light of the above finding, it is unnecessary for the Panel to reach this third factor. That said, the Panel briefly notes that Complainant has not alleged any cognizable grounds for a bad faith finding. The assertion that “Respondent has precluded Complainant from using its mark in a corresponding domain name” must be rejected out of hand because there is no allegation of a pattern of such behavior, which is required by the Policy. See Policy paragraph 4(b)(ii). As for Complainant's assertion that the domain name causes “initial interest confusion,” the Panel concludes that there can be no such “initial interest confusion” where the Respondent's use of the domain name is, itself, legitimate under the Policy.

7. Decision

Complainant has failed to establish that Respondent has no rights to or legitimate interest in the <okidataparts.com> domain name. Accordingly, the Panel denies Complainant's request that the domain name <okidataparts.com> be transferred.

David H. Bernstein
Sole Panelist

Dated: November 6, 2001