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Unauthorized Use of Registered involved the unsuccessful complaint

Trademarks in Domain Names: brought by Oki Data Americas, a
computer accessories manufacturer,
WIPO Panel Decision Creates
against an authorized reseller who was
Middle Ground using the domain name
okidataparts.com.
December 2008 Vol. 21: Issue 12 In dismissing ITT’s complaint
against Differential Pressure
A WIPO arbitration panel recently held
Instruments, the WIPO panel applied
that an original manufacturer may not
the four conditions laid down in the
have an infringement complaint when
2001 Oki Data case, to determine
an unauthorized dealer’s domain name
whether Nicoll’s company had a
contains the manufacturer’s trademark.
legitimate interest in the domain names.
This decision has been greeted with
The four conditions are that:
criticism in some quarters but when
• the respondent must actually be
closely examined, the decision sits well
offering the goods or services at
with common sense and fairness.
issue;
The complaint which gave rise to the
• the respondent must use the
decision was brought by ITT, a pressure
website to sell only the
gauge manufacturer, against Douglas
trademarked goods (in order to
Nicoll and his company Differential
prevent a possible bait-and-
Pressure Instruments. The respondent’s
switch scenario where consumers
(Douglas Nicoll) company had acquired
are duped)
surplus ITT pressure gauges and
• the site must accurately disclose
registered several domain names to sell
the relationship between itself
the excess product without
and the trademark owner
authorization from ITT. Evidence
• the respondent must not try to
showed that the domain names of
“corner the market” in all
Douglas Nicoll’s company included the
relevant domain names,
ITT trademark by using web addresses
depriving the trademark owner
such as ittbarton.com and itt-
of reflecting its own mark in a
barton.com.
domain name
In the complaint, ITT argued that
In its decision, the WIPO panel held that
Nicoll had no right or legitimate interest
the four conditions were met. In
in the domain names and asked WIPO
addressing the argument that the Oki
to adopt a favourable interpretation of a
Data case was limited to situations
2001 case that dealt with a similar issue.
where the reseller was authorized, the
It should be recalled that the 2001 case

©Blackfriars LLP 2008. All rights reserved. This document is for general guidance only. Definitive advice
should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative
office in Toronto, Canada.
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panel decided that the “issues of For further inquiries, please contact:
legitimate reseller interests in accurately
describing a lawful business, on the one Dr. Chidi Oguamanam
hand, and of potential abuses of Email: chidi@blackfriars-law.com
trademark, on the other, are similar Phone: +234 1 739 0397 (Lagos)
whether or not there is a contractual Phone: +1 902 494 7125 (Halifax)
relationship between the parties.” Fax: + 234 12694781
A central thrust of the criticisms so
Ms. Nkeiru Onyeaso
far leveled against the WIPO decision in
Tel: +234 808 718 0833
ITT is that the decision of the panel does
Email: Nkay@blackfriars-law.com
not sit well with the facts of the case.
Fax: +234 1 2694781
However, a careful review of the facts of
the case suggests that some of the critics
Ms. Clara Ndive
of the decision have overstated the
Email: Clara@blackfriars-law.com
importance of the facts alleged to have
Tel: +234 803 323 1868
been given the short shrift. To the extent
Fax: +234 1 2694781
that the WIPO Panel decision was
premised on a holistic application of the
four conditions earlier laid down in the
Oki Data case, it is difficult to quarrel
with the reasoning of the panel.
It is generally accepted that a key
policy imperative of the law of
trademarks is that the protection of
trademarks puts the public in an
informed position on the quality, source,
and provenance of goods and This newsletter has been sent to you by
services. If this policy imperative still BLACKFRIARS LLP, a full-service law firm, in
the genuine belief that its contents would be of
holds true, the recent WIPO decision is
interest to you. If you have received this
justifiable on both the law and policy of newsletter incorrectly, or if you do not want to
trademark protection. receive further information about legal
To the extent that Nicoll’s company developments in Nigeria and West Africa,
was not presenting its goods as those of please accept our apologies. To unsubscribe
from future newsletters from BLACKFRIARS
ITT, the WIPO panel ruling provides a LLP please send an email to info@blackfriars-
pragmatic and principled application of law.com with "unsubscribe" in the subject line.
trademark law.

©Blackfriars LLP 2008. All rights reserved. This document is for general guidance only. Definitive advice
should be sought from counsel if required. Blackfriars LLP is a Nigerian law firm with a representative
office in Toronto, Canada.