UDRP: the offer of products “compatible” with those of the claimant

JUUL Labs started UDRP proceedings to stop acts of unfair competition and misleading advertisement and, at the same time, obtain the transfer of the juulcompatible.com domain name. Circumstances irresistibly invite to refer to the Oki Data decision. According to this case law established as early as 2001 (WIPO, D2001-0903, Oki Data Americas, Inc. v. ASD, Inc., November 6, 2001), resellers, distributors, repairers, and other service providers using a domain name comprising a trademark are presumed to have a legitimate interest and to trade in good faith as long as the following cumulative requirements are met:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

In this case, the panelist considered that the respondent offered competing products that were not compatible with those of the claimant so that the second condition was not met. Furthermore, the site in question did not disclose the relationship between the owner of the domain name and the trademark owner. Therefore, the third condition was also lacking. In view of the domain name holder’s failings, the latter was not in a position to claim a right or legitimate interest in the disputed domain name.

As for the demonstration of bad faith, there were several clues:

  • failure to inform the public of the lack of relationship with JUUL Labs buy a prominent disclaimer;
  • offering competing products under the JUUL trademark;
  • using an email address with the JUUL trademark; and
  • intellectual property rights notice referring to the JUUL trademark.

It is difficult to see how the domain name transfer could have escaped the claimant in these circumstances. However, it is regrettable that no express reference has been made to the Oki Data case law.

Source : NAF, FA2008001908489, JUUL Labs, Inc. v. oleg spiridonov, September 10, 2020.

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