UDRP – buyjuul.com or a reminder of the importance of the OKI DATA case law in the presence of commercial websites
The main arguments from Juul Labs were that the registrant and website publisher was not an authorized dealer and offered potentially counterfeit products for sale. According to the complainant, even in the presence of authentic products, these would have been obtained in violation of Juul Labs rights.
These arguments were rejected following a reminder of the “OKI Data” case law, which dates back to 2001 (WIPO, d2001-0903). This case-law sets the conditions an offering of goods or service must fulfill in order to be considered as bona fide:
- The Respondent actually offers the goods or services at issue, and;
- uses the site to sell only the legitimate trademarked goods, and;
- the site accurately discloses the registrant’s relationship with the trademark owner, and;
- the respondent does not try to corner the market in all domain names (eg. : to register domain names in proportions preventing the Trademark owner to enjoy its rights).
According to the panel findings, the website (still) accessible at the address https://buyjuul.com/fulfills these conditions. In this case the registrant of the domain name appeared to buy his merchandise from an authorized Juul Labs reseller. The panel reminds that in the presence of genuine goods, the UDRP is not meant to remedy the consequences of potential breaches of distribution agreements.
It is interesting to note that one of the panelists provided a dissenting opinion, notably based on the alleged low visibility of the website’s disclaimer put in place by the registrant and stating the absence of links between the latter and Juul Labs. The two other panelists rejected this argument and considered the placement and visibility of the disclaimer, at the bottom of the website’s pages, as reasonable.
Caution is advised for UDRP complaints against domain names associated with commercial websites. In another recent decision (ADR.EU, 102168), the company INTERPARFUMS failed to get the domain name rochasshop.com back : the Complainant did not make a prima faciecase of the Respondent being non-compliance with OKI Data conditions.
In case of doubt, additional investigations and test purchases need to be considered. IP Twins account managers are available to assist you in the preparation and the follow-up of your UDRP complaints.