WIPO D2001-0903 · decided 6 November 2001
Oki Data Americas, Inc. v. ASD, Inc.
The parties
- Complainant
- Oki Data Americas, Inc.
- Respondent
- ASD, Inc.
What did the panel find on each element?
| Policy paragraph | Finding |
|---|---|
| 4(a)(i) Identical or confusingly similar | The panel found okidataparts.com confusingly similar to the OKIDATA trademark because it contains the whole trademark, and adding the word "parts" did not change that. |
| 4(a)(ii) No rights or legitimate interests | The panel found that ASD, Inc., an authorized Oki Data repair centre selling only OKIDATA goods, made a bona fide offering, so Oki Data Americas failed to prove this element. |
| 4(a)(iii) Registered and used in bad faith | The panel did not decide this element because the complaint failed on the second element, though it noted Oki Data Americas had alleged no cognizable grounds for bad faith. |
Why does Oki Data matter for a complaint today?
In Oki Data Americas, Inc. v. ASD, Inc., D2001-0903, the panel refused to transfer okidataparts.com from an authorized Oki Data repair centre. The panel set four minimum conditions for a reseller's offering to be "bona fide". The reseller must actually offer the goods. The site must sell only the trademarked goods. The site must accurately disclose the reseller's relationship with the trademark owner. And the reseller must not try to corner the market in domain names. ASD, Inc. met all four, so Oki Data Americas lost on the second element. For a business owner, the lesson is that the UDRP is the wrong tool against a genuine dealer. The panel said trademark owners should negotiate protection "through appropriate contractual language" or go to court. The WIPO Overview 3.1, section 2.8, now calls this the "Oki Data test". The Overview adds two limits. The test does not apply where an agreement between the parties expressly prohibits or allows such domain names. And panels have found that a domain name identical to the trademark, with no added word like "parts", carries a risk of impersonation. So a dealer agreement that bans these registrations is your best protection.
What does the WIPO Overview 3.1 say?
The WIPO Overview 3.1 summarises how WIPO panels decide each issue. These sections cover the same point of law.
- Section 2.8: How do panels assess claims of nominative (fair) use by resellers or distributors? The Overview cites this decision here.
- Section 2.5: What are some core factors UDRP panels look at in assessing fair use? The Overview cites this decision here.
Who decided the case?
A single panelist, David H. Bernstein, decided the case on 6 November 2001.
Read the decision
The full text is published by the WIPO Arbitration and Mediation Center. We summarise it here; the decision itself is the authority.
Summarised by Gergana Dimitrova, who worked at the WIPO Arbitration and Mediation Center from 2018 to 2021 and sits as a domain name panelist at the Czech Arbitration Court. Checked against the published decision on 23 October 2026. Full background.
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