Relevant Decisions

Textron Innovations Inc. v. Joerg Dogondke, Forum FA2504002151258 <cessna150150. com>, Denied

Indeed, the facts here bear substantial similarities to the Bobcat case, which held that “applying a holistic approach, the Panel finds on balance that the changes the Respondent made illuminate the overall bona fide offering of goods using the disputed Domain Name.” Id. Here, likewise, Respondent appears to be engaged in a good-faith aftermarket business whose products originate with genuine Cessna products.

Textron Innovations Inc. v. Robert Vondersaar, Forum FA2407002106243, <lycomingoverhaul.com>, Denied

On its face, the Respondent’s use of the disputed domain name appears to violate the second element of the Oki Data test. However, the Fluke summary of the Oki Data test does accurately summarize the entirety of element 2 of the Oki Data test. Element 2 of Oki Data states “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.” (emphasis added) In other words, the primary concern underpinning element 2 is to prevent Respondents from using “the trademark to bait Internet users and then switch them to other goods.” The decision further clarifies that “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.” …

Following this approach, the Panel’s overall assessment is that, on balance, the Respondent’s references to providing support for other non-Complainant engines do not constitute bait-and-switch selling or an attempt to divert Internet users in a manner contrary to the Complainant’s interests.

Law School Admission Council, Inc. v. Nathan Cepelinski / City Jingles, Forum FA2405002098803, <masterlsat.com>, Denied

Contrary to the unsupported assertions in the Complaint that the Domain Name and Respondent’s Website “falsely suggest that they are associated with Complainant” there is nothing in the Respondent’s Website that would imply to a visitor that Respondent is anything other than what it is, namely a business offering a LSAT preparation service independent of Complainant. As noted in the Response, the Respondent’s Website makes no claim, explicit or implicit to be affiliated with the Complainant.  There is no obvious assertion that Respondent is connected to Complainant and no apparent use of Complainant’s get-up or copyrighted material on the Respondent’s Website. The Panel accepts the Respondent’s submissions that there is simply no reasonable way to advertise its services as a private LSAT tutor without mentioning “LSAT” on the Respondent’s Website and that and no reasonable consumer would interpret the mere reference to LSAT alone as affiliation with the Complainant…

Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized.  Either way, if the use is fair and non-confusing, it should be permitted.

Textron Innovations Inc. v. Mike Brannigan / Dquery.io, Forum FA2404002095240, <hiobeech.com> and <bayareabeech.com>, Denied, RDNH

Respondent’s use of the disputed domain names clearly meets the established Oki Data test:

• He uses the site to provide services related only to Complainant’s trademarked goods and no other aircraft;
• The Website accurately discloses that Respondent has no relationship with Complainant; and
• He is not trying to corner the market in domain names relating to the Trademark.

In light of the facts of this case, including in particular the prominent disclaimer on the Website, Complainant ought to have appreciated that it would be unable to establish both the second and third limbs under paragraph 4(a) of the Policy in this proceeding.

Law School Admission Council, Inc. v. Vandalay Media / sean Matthews, Forum FA2405002096289, <lsatdoctor.com>, et. al., Denied

Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized.  Either way, if the use is fair and non-confusing, it should be permitted.

Law School Admission Council, Inc. v. CALLED Inc, Forum FA2405002096201, <lsatexperts.com>, Transfer

The web site attached to the Domain Name features a log in page with the Complainant’s mark in its masthead. It does not make it clear that there is no connection with the Complainant. The Panel finds this use is deceptive and passing off. As such it cannot amount to the bona fide offering of goods and services.

KT & G Corporation, and Philip Morris Products S.A. v. Ieva Kalnina, WIPO D2024-0555, <lilsolid.com>, Transfer

Furthermore, the Panel does not find the Oki Data criteria to be satisfied in this case.  Those criteria, if fulfilled, may enable a respondent such as a reseller or independent service provider to demonstrate rights or legitimate interests in respect a domain name which incorporates a trademark owners’ mark.  However, this is a high – if not insurmountable – hurdle in a case where the disputed domain name itself is inherently misleading.  In this case the Panel finds the Respondent’s “Legal notice” to fall very far short of the requirement for an accurate and sufficiently prominent disclaimer which makes clear the relationship (or lack thereof) between the website operator and the trademark owner.  The disclaimer is accessible only by a link from an inconspicuous item, “Legal notice”, included towards the end of the website footer, which fails in any significant respect to command the attention of the website visitor.  The Respondent’s website content itself is (or was prior to the Respondent’s changes) moreover highly suggestive of an affiliation between the website and the Complainants, including the prominent use of the Complainant’s trademarks and official product images, and the Panel finds the “Legal notice” to be in no way effective to offset the misleading impression created by this website content and the choice of the disputed domain name itself.  In this case, insofar as the identical disputed domain name communicates a message of affiliation, it does so in a misleading manner.

Airbus SAS v. Ben Riecken, WIPO D2023-3842 <a320guide.com>, Denied

From an inspection of the Respondent’s website at the disputed domain name, the Panel finds that the Respondent is actually offering for sale Airbus A320 training materials, and – at least on the evidence before the Panel – only Airbus A320 training materials, as the disputed domain name implies, not using the Complainant’s trademark to “bait and switch” customers to other products and/or services:  the Respondent appears to use the term A320 in a nominative fair use sense to refer to the Airbus A320, adding to it the descriptive term “guide”.  WIPO Overview 3.0, section 2.8.2.  The Panel expresses some concern that while the Respondent’s website accurately and prominently explains that the Respondent is an independent entity and is not affiliated with the Complainant, this disclaimer may be removed with a single click and then no longer appears.

Thor Tech Inc. v. Eric Kline, WIPO D2023-4275 <airstreammarketplace.com>, Denied with concurring opinion

The Panel finds, however, that Respondent’s has not complied with Oki Data’s requirement that “the site itself must accurately disclose Respondent’s relationship with the Mark owner.” The threshold question is whether the relationship between Complainant and Respondent needed any clarification. The Panel finds that the answer is “yes.” The addition of “marketplace” to Complainant’s Mark is ambiguous. On one hand, “marketplace” is a neutral term that connotes a free market that is not controlled by the participants. Merriam-Webster defines “marketplace” as “an open square or place in a town where markets or public sales are held.”

On the other hand, the conjunction of “marketplace” with the trademark AIRSTREAM does not inherently (and clearly) communicate that the “marketplace” is not affiliated with or sponsored by the trademark owner.

Even though Respondent failed to clarify its relationship with Complainant as required by Oki Data, the Panel is not persuaded that Respondent registered the Disputed Domain Name in bad faith. Panelists frequently observe that the UDRP is meant to address intentional bad faith conduct and not “ordinary” trademark infringement. This case illustrates the distinction.

SEGWAY INC.v. Segway Firenze Srl, ADNDRC HK-2301782 (2023), <ITALYSEGWAYTOURS.COM> , Denied

While such a disclaimer may have assisted in demonstrating that there is no  relationship between the parties (and thus assisting to show that consumer confusion is  unlikely), lack of such a disclaimer is not fatal to the Respondent’s case. This is because  the overwhelming evidence of the Respondent’s legitimate business and fair use of the  disputed domain name makes such a disclaimer unnecessary.

Sub-Zero, Inc. v. Daniel Ellis / Joel Gonzalez / SEO Repair Shop / Elite Sub-Zero Repair, Forum FA2210002014882, <elitesubzerorepairsanantonio.com> and <subzerorepairsanantonio.com>, 3-member, Split Decision

It is necessary to consider the underlying policy when deciding whether the second factor is satisfied, namely to avoid “bait and switch” scams (for example if Respondent was using Complainant’s trade mark to advertise a general refrigerator repair services at Respondent’s Website). Respondent’s Website promotes Respondent’s business offering specialist repair services for SUB-ZERO products. It does not refer to any other brand of refrigerator company nor does it link to any other websites where Respondent advertises expertise in repairing any refrigerator brands other than those of Complainant. While Respondent, as stated on Respondent’s Website (not highlighted in any way) may rarely work on other high-end brands, this in no way changes the “character” of the Respondents’ Website and this is not a case where the Domain Name is used for a “bait and switch” exercise. Respondent’s use of the Domain Name for the Respondent’s Website is consistent with the stated purpose which is to advertise that Respondent offers specialized repair services for Complainant’s appliances in the San Antonio area. …

In summary it appears that Respondent operates a legitimate business repairing Complainant’s appliances and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and SUB-ZERO Mark beyond that which arises from a truthful use of the SUB-ZERO Mark to describe the services that Respondent’s business provides.

Shopify Inc. v. Don Shine, CIIDRC 17459-UDRP (2022), <expertshopify.com> , Transfer

However, where the Respondent does run afoul of the third part of the test, is the Respondent express statement on his website; “Working with us, official shopify partners…”, thereby apparently falsely claiming that he is in fact an official Shopify partner and thereby affiliated with and authorized by the Complainant.

Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson, Forum FA2203001988399, <flukerepair.com> and <fixmyfluke.com>, Denied with dissenting opinion

Majority Opinion:

In view of the said uncertainty, one has to consider the broader facts and circumstances, including the associated website content. In this regard, section 2.5.2 of the WIPO Overview 3.0 provides that some of the factors to be considered in the assessment”. Here, the words which make up the <flukerepair.com> and <fixmyfluke.com> domain names do not definitively trigger an inference of affiliation though they also don’t overtly indicate the contrary.

In sum, the notice on Respondent’s website is clear in conveying the message that no formal affiliation with Complainant exists and the overall content of the site does not give the impression that it originates from or is formally associated with Complainant.

Dissent:

Respondent’s casual third party references to Complainant in the body of its website are not enough to disconnect the implication that Respondent is sponsored by or affiliated with Complainant left by the <flukerepair.com> domain name itself as well as by the look and feel of Respondent’s website. Notably, any ambiguity as to Respondent’s association with Complainant could have been mitigate by Respondent’s use of a less suggestive domain name and/or a website designed to allay the impression that Respondent is in anyway connected with Complainant.

Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, Forum FA2101001927129, <centricsubzerorepair.com>, 3-member, Denied

Respondent appears to use the Domain Name for a legitimate purpose and in respect of a bona fide offering of services, namely the repair services of SUB-ZERO-branded products. The repair services do not extend to products of a competing brand(s). Respondent’s referential use of the SUB-ZERO mark appears to be valid and bona fide. Respondent’s website accurately discloses the nature of its business and that it is not affiliated with Complainant. There is nothing in the content of Respondent’s website which suggests affiliation with or endorsement by Complainant. The Panel finds that the disclaimers on Respondent’s website are sufficiently prominent and clear enough such that it would be evident to consumers that Respondent is not affiliated to or endorsed by Complainant. Neither is there any evidence of a pattern of conduct by Respondent of registering domain names containing the trademarks of Complainant or of third parties. The Panel finds that the evidence shows Respondent satisfies the four elements of the Oki Data test. Respondent uses the Domain Name for its business of repair of SUB-ZERO appliances, which is consistent with what is reflected in the Domain Name.

Digest Commentary

• Digest Vol. 4.44 < bobcatfinaldrivesales .com>, Denied
• Digest Vol. 4.34  <lycomingoverhaul .com>, Denied
• Digest Vol. 4.24 <thelsatgenius.com>, Denied
• Digest Vol. 3.46 <a320guide.com>, Denied
• Digest Vol. 3.43 <italysegwaytours.com>, Denied
• Digest Vol. 3.40 <countrycompaniesinsuranceclaimsajusting.com>, Denied, RDNH
• Digest Vol. 2.48 <subzerorefrigeratorservice.com>, Denied
• Digest Vol. 2.39 <usaainsuranceclaimsadjusting.com>, Denied, RDNH