Legitimate Use of Trademark: Consultants, Distributors and Resellers

First it was authorized resellers whose incorporation of a complainant’s trademark was deemed to be legitimate if they met the 4-part test originally announced in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). Subsequently, the legitimacy was extended to unauthorized resellers, distributors and consultants. The 4-part test requires that the respondent must (1) actually be offering the goods or services at issue; (2) 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; (3) must on its website 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 (4) not try to corner the market in all domain names, thus depriving the owner of reflecting its own mark in a domain name.

Domain names may undoubtedly be confusingly similar to the complainant’s trademark, but a trademark holder cannot exclude non-competiting parties from making a bona fide offering of goods or services based on the complainant’s products. A number of cases have involved cars or automobile parts[DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001 )]; the Respondent in Oki Data registered <okidataparts.com> for its business of selling and repairing OKIDATA products and parts. SAP AG has been a Complainant in some earlier cases charging abusive registration. It is a well known and widely-used name of the Complainant’s software products. Earlier this year SAP AG complained about <unisap.com> registered by UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (WIPO May 29, 2009) (See Note for May 29, 2009). More recently it commenced a proceeding against SAP User List, D2009-1285 (WIPO November 8, 2009) in an attempt to capture <sapuserlist.com>).

The Respondent in SAP User List is neither a reseller in the traditional sense nor a distributor. It is “the supplier of lists of users of ‘SAP’ software to other companies seeking to target the users as potential clients.” While this service is related to the Complainant’s software products it is targeting very different markets. “The Complainant argues that ‘[e]ven if [the] Respondent needed to refer to the Company SAP, the collateral trademark use necessary does not confer the right to use SAP’s trademark as a domain name’.” The argument fails for the same reason that Oki Data failed. “A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements.”

Gerald M. Levine, <udrpcommentaries.com>

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