By Steve Levy
As with general trademark law, the concept of fair use is incorporated into the UDRP in paragraph 4(c)(iii) which says that a domain name owner has rights or legitimate interests in a disputed domain name if it can show that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The practical meaning of this includes situations where a reseller or distributor may legally use someone else’s trademark to describe the nature of their products or services (ex., “We Sell Genuine Mercedes Parts”). This is referred to as “nominative” fair use since the trademark is used only to name the goods or services. Of course, there are limits to this and the reseller or distributor can’t make such extensive use of the trademark (or logo), or do anything else that might confuse people into thinking that they are, or are formally affiliated with, the trademark owner.
Nominative fair use has sometimes been seen in the domain name space where UDRP decisions have upheld a reseller’s or distributor’s use of a website to promote its business. The most often cited decision for this concept is that of Oki Data Americas Inc. v. ASD, Inc. which set out a test where a sales or service dealer of trademarked goods (whether authorized or unauthorized) may demonstrate that its domain name use is bona fide where 1) it is actually offering the goods or services at issue; 2) it uses its website to sell only the trademarked goods or services and not those of a complainant’s competitors or other third-parties; 3) the website accurately discloses the registrant’s relationship (or lack thereof) with the trademark owner; and 4) the Respondent has not tried to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
A decision that I authored in 2022 applied the Oki Data test and found that the domain names flukerepair.com and fixmyfluke.com made a fair use of the FLUKE trademark for the services of repairing products from that brand owner. A similar result was found in a case against the domain name subzerorefrigeratorservice.com where the Respondent provides repair services for the Complainant’s trademarked refrigerators.
However, a question that remains is exactly when a Respondent needs to show that it has rights or legitimate interests in a disputed domain name. Is it at any time in the past? This is not the position that’s been taken by most UDRP panels which have held that this the Respondent’s use should be viewed at the time that the dispute was engaged – either by a demand letter or the filing of a UDRP complaint. This was a critical factor in a recent case against the domain name humveerentalnagshead.com. Although the panel denied the case finding no bad faith by the Respondent who operated a touring service that rented out actual HUMVEE vehicles on the island of Nags Head, North Carolina, USA, the website had recently been taken down. The panel seems to have concluded that the past domain name use appeared to satisfy the Oki Data test but it noted that “Respondent may have ceased use of the disputed domain name and possibly its related business activities since the date on which the Complaint in this proceeding was submitted.” It also pointed out that “Respondent engaged legal counsel in August 2024 to respond to Complainant’s cease and desist letter, but has declined to participate in this proceeding.” It concluded by finding no rights or legitimate interests saying that “[i]t is therefore unclear whether Respondent currently has any rights or legitimate interests in respect of the disputed domain name. Complainant has made a prima facie case that Respondent lacks such rights or interests…”
It is unclear, from this decision, exactly when the Respondent took down the website but it seems that it may have still be up at the time that the UDRP complaint was filed. This element of timing leads me to think that the panel applied an incorrect standard by finding that the Respondent has no rights or legitimate interests. Interestingly, in the section of the decision addressing bad faith, the panel noted that “[i]t appears that Respondent registered the disputed domain name for use in connection with a bona fide business offering rentals of genuine HUMVEE vehicles, under circumstances likely qualifying as a nominative fair use of Complainant’s mark.” Of course, there can be some overlap between the rights or legitimate interests and the bad faith parts of the UDRP but the finding of fair use here seems inconsistent with the earlier conclusion that the Complainant had made a prima facie case.
To put a bow on this discussion, it’s important to look, not only at the Oki Data test when considering a nominative trademark fair use defense, but also the timing of the use. Apart from whether bad faith can be shown, where an arguably fair use had ceased prior to a brand owner raising the dispute, it may be possible to show that a Respondent has no current rights or legitimate interests.