Domain name disputes between trademark owners and their distributors, resellers and product sellers have distinctive features. Unlike traditional cybersquatting cases, the respondent in these disputes often runs a legitimate business and sells genuine products under the relevant brand.
The key question is: where is the line between legitimate use of another party’s trademark to sell products and improper use of that mark in a domain name?
Under the Uniform Domain Name Dispute Resolution Policy (UDRP), a complainant must establish three elements: that the domain name is identical or confusingly similar to a trademark in which the complainant has rights; that the respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
In disputes involving resellers, the main contention usually concerns the second element, which is assessed using the Oki Data test. However, the third element can also determine the outcome, particularly where the respondent is a former business partner of the trademark owner, as discussed below.
The Oki Data Test: Four Criteria
Under section 2.8.1 of the WIPO Overview 3.1, intermediaries, distributors and service providers may, under certain circumstances, have a legitimate interest in a domain name containing the complainant’s trademark.
The test for assessing these circumstances originated in Oki Data Americas, Inc. v. ASD, Inc. (D2001-0903) and became known as the Oki Data test.
The structure of the domain name also matters. The Oki Data test is generally applied to domain names combining a trademark with a descriptive term, such as parts, repairs or location. However, concerns about consumer confusion have led panels to find that respondents lack rights or legitimate interests where the domain name is identical to the complainant’s trademark.
Four criteria are considered when assessing whether a reseller has rights or legitimate interests in a domain name:
- Genuine offering: the reseller actually offers the relevant goods or services.
- Use limited to the trademark owner’s goods or services: the website offers only the trademark owner’s products or services, rather than those of competitors.
- Accurate disclosure: the website clearly and prominently discloses the reseller’s status and the nature of its relationship with the trademark owner.
- No attempt to corner the market: the reseller does not seek to monopolise the trademark through the registration of multiple domain names incorporating it.
These criteria are assessed together. Meeting any single criterion, including the sale of genuine products, does not in itself guarantee a finding of legitimate interests.
The second criterion is not applied mechanically. If a website offers third-party products without misleading consumers or engaging in bait-and-switch practices, whereby customers are attracted by another party’s trademark and then diverted to different products, the overall assessment may still favour the reseller. The outcome therefore depends on how those products are presented.
Authorised or Independent Reseller: The Oki Data Test Applies to Both
The absence of a contract with the trademark owner does not automatically mean that the reseller will lose the dispute. Depending on the circumstances, the Oki Data test may apply to both authorised partners and independent resellers.
In Doosan Bobcat North America, Inc. v. mohit jagwani, engine world usa (D2024-3191), the respondent sold aftermarket parts compatible with Bobcat equipment through the domain name bobcatfinaldrivesales.com. At first glance, this appeared inconsistent with the second Oki Data criterion. However, the panel took into account that, following the trademark owner’s demand letter, the respondent changed the website’s presentation, made the BOBCAT mark less prominent and added a disclaimer stating that it was not an authorised dealer. The panel found that the respondent had legitimate interests and denied the request to transfer the domain name.
Practical takeaway: an independent reseller may be able to defend its domain name if its business is conducted in good faith and the website does not create a false impression of an official connection with the brand.
Commercial Cooperation Does Not Automatically Establish Authorisation
In DigiCert Inc. v. Master Tom (D2025-1254), the respondent used the domain names digicertchina.com and digicertcn.com, displayed the DigiCert logo and described itself as an “AUTHORIZED PARTNER”.
The respondent relied on commercial dealings, commission payments and correspondence with company employees. However, this evidence did not establish official distributor status or permission to register domain names incorporating the DIGICERT trademark. The website created the impression of being an official resource, and a disclaimer at the bottom of the page did not dispel that impression. The panel ordered the domain names to be transferred to the trademark owner.
Practical takeaway: the ability to sell a company’s products does not automatically confer the right to use its trademark in a domain name or describe oneself as an authorised partner.
A Disclaimer Is Not Always Enough
In JUUL Labs, Inc. v. M Shakib (DAE2026-0004), the domain name juldubai.ae, the name “JUUL Dubai” and the prominent use of the trademark created the impression of an official regional representative. A disclaimer at the bottom of the website did not eliminate the risk of consumer confusion, and the panel ordered the domain name to be transferred to the trademark owner.
Practical takeaway: the panel assesses the overall impression created by the domain name and website, not merely whether a disclaimer is present. Any disclaimer should be prominent and consistent with the website’s overall presentation.
Selling Competitors’ Products: A Risk of Losing the Domain Name
In ABB Asea Brown Boveri Ltd. v. Huang Zhiyuan (D2025-5087), the domain name abbpartsupply.com was used to sell ABB industrial components alongside competing products.
This business model did not satisfy the Oki Data criteria because the domain name incorporating the trademark attracted customers to purchase competitors’ products as well. The panel ordered the domain name to be transferred to ABB.
Practical takeaway: selling genuine products does not guarantee legitimate interests if the website also promotes competitors’ goods.
When the Trademark Owner’s Silence Matters
In Walbro Engine Management, LLC v. Express Fuel Pumps (D2021-2409), the panel denied the request to transfer walbrofuelpumps.com, which was used by a reseller of genuine WALBRO products. The panel took into account the trademark owner’s long-standing awareness of the domain name without objection, as well as the reseller’s good-faith business model and website presentation.
Practical takeaway: a trademark owner’s silence does not automatically legitimise a domain name, but in certain circumstances it may strengthen the reseller’s position.
How Businesses Can Reduce the Risks
Under section 2.8.1 of the WIPO Overview 3.1, the Oki Data test does not apply where a prior agreement between the parties, whether express or otherwise, expressly prohibits or permits the registration or use of domain names incorporating the complainant’s trademark.
Trademark owners should therefore clearly regulate domain name use in their agreements with business partners, specifying:
- who is entitled to register domain names incorporating the trademark;
- which domain names are permitted and whether prior approval is required;
- how the partner’s status must be disclosed;
- whether terms such as “Official Store”, “Authorised Partner” or “Official Distributor” may be used; and
- who will own the domain name after the business relationship ends.
This is particularly important when an agreement is terminated. In APT Advanced Polymer Technology Corp. v. Matt Arnold (D2019-0824), following the termination of a distribution agreement, the respondent continued using synlawnsouthcarolina.com, including to promote third-party products. The panel found that the respondent lacked rights or legitimate interests but denied the transfer request because the complainant had failed to establish that the domain name was registered in bad faith, which is required under the third UDRP element.
This case illustrates that the end of a business relationship may deprive a former partner of legitimate interests in a domain name, but it does not guarantee that the domain will be transferred.
Conversely, where the parties have expressly agreed on the rules governing domain name registration and use, those contractual terms may affect the application of the Oki Data test. Such provisions should therefore be drafted carefully and clearly.
Independent resellers should avoid registering domain names identical to a trademark and should also check:
- whether their website meets the Oki Data criteria;
- whether it promotes competitors’ products under a domain name incorporating another party’s trademark; and
- whether consumers can clearly identify who operates the website.
Conclusion
In a UDRP dispute, a domain name incorporating a trademark does not automatically go to either the trademark owner or the reseller. The outcome depends on good-faith use, transparency regarding the relationship with the trademark owner, the absence of consumer confusion and compliance with contractual restrictions.
For trademark owners, this highlights the importance of clear agreements and timely action against potential infringements. For resellers, it underlines the need to assess whether their domain names and websites meet the Oki Data criteria and avoid creating the impression of an official affiliation without proper grounds.
Author: Daria Hafonova
Our firm has more than 20 years of experience in protecting trademarks. Contact us to discuss your IP dispute, including domain name matters.