Rethinking the Oki Data Fair Use Test
August 2, 2016
One of the most oft-cited decisions in the history of the UDRP (Oki Data Americas, Inc. v. Asdinc.com) involves use of the domain okidataparts.com for a website offering the sale and repair of genuine OKIDATA branded products and parts. That 2001 decision found in favor of the respondent saying that the trademark was used fairly to describe the respondent’s business. It gave forth the “Oki Data Fair Use Test,” a four-factor assessment that can be summed up as follows:
- The respondent must actually be offering genuine branded goods or services;
- The domain can’t be used to offer goods or services that compete with the brand;
- The website must accurately disclose the respondent’s relationship (or lack thereof) with the brand owner; and
- The respondent must not try to corner the market by registering many variations of the domain that include the brand as this could prevent the brand owner from legitimately reflecting its trademark in a domain name.
Fast-forward 15 years and now there has been quite a timely evolution in thinking from the very same Panelist who authored the original Oki Data opinion. In the YETI Coolers case, which involves the sale of plastic handles that are an accessory to and can be used to hold insulated travel coffee mugs, four different domains were at issue, including yeticuphandles.com (YETI is the brand of a well-known maker of insulated drink mugs).
What Does “Cornering the Market” Mean Now?
Although the Respondent here registered four domains that incorporate the YETI brand, the Panel did not find this to be an attempt to “corner the market” under the fourth prong of the Oki Data Fair Use Test. While admitting that this factor gives him “pause,” the Panelist goes on to discuss the historical context of this prong as having been created during a time when only a few top-level domains were available (ex. .com, .net, .org, etc.). Now that there are hundreds of new TLDs from which to choose, the Panel reasons that harm to a brand owner may be lessened where a domain owner registers multiple variations on that brand.
However, is such a change in thinking somewhat premature given the fact that registrations in legacy TLDs remain dominant due to the slow pace with which both consumers and brand owners have taken up use of new gTLDs? It may not have made a difference in this particular case, since only four domains were involved, but it will be interesting to see how this decision impacts some future case that clearly would have fallen within the original fourth prong of the Oki Data test (ex., 14+ domains as mentioned in one particular decision).
Whose Products Are Sold at the Website is Critical
As to the second Oki Data Fair Use Test prong, the fact that the Respondent’s goods are after-market accessories for use in conjunction with the Complainant’s products appears to have been critical since the Panel states that “the nature of the handles is that they can be used for other brands of cups and tumblers as well.” In the original Oki Data case the Respondent was only offering Oki Data products. However, the YETI Coolers decision indicates that, in the case of after-market accessories, it is those accessories themselves and not the complainant’s own products that are the focus of the inquiry since the Respondent’s domains redirect to an Amazon page where the cup handles are sold and that mentions brands other than YETI. The Panel made special note of the fact that Respondent’s own THERMIK trademark is clearly visible on its handles in the picture that appears on the Amazon page and there also appears a disclaimer indicating that the product is “not endorsed or sponsored by YETI Coolers.” As such, customers are not likely to be confused or misled into thinking that the cup handles are made or approved by the Complainant.
But In An Alternate Universe…
I’m left wondering what would happen in a hypothetical situation where the Respondent uses its disputed domains to promote its own accessories, which are specifically designed for use with only YETI products as well as to promote other accessories that are similarly designed only for use with the products of the Complainant’s competitors. True, such use might not be directly promoting competitive goods if website visitors are only shopping for accessories for products they already own, but there seems to be a risk of such promotion if a new buyer (one who hasn’t yet decided upon which insulating mug to buy) is influenced by the design or features of accessories that may differ for various brands. In this hypothetical scenario, the domain of the site selling accessories could, in fact, implicate the second prong of Oki Data Fair Use Test by promoting the products of a complainant’s rivals.
In any event, changes in longstanding UDRP positions come around very rarely and so, I feel that the YETI Coolers decision is one to watch. It may be limited to its specific facts or it may open a door for future decisions to be more lenient when considering the fair use of trademarks in domain names.