OKI Data Americas, Inc. V. ASD, Inc.

A key decision that created the global “Oki Data Test” to determine when a reseller may legally use a trademark online.

Summary

This case concerned whether ASD, a reseller of genuine Oki Data products, could use the domain name okidataparts.com. Oki Data argued that using its mark in a domain name misled customers into believing ASD was an authorized dealer. The dispute resulted in the creation of the “Oki Data Test,” a standard used worldwide for deciding whether reseller use of a trademark is legitimate and non-infringing.

Facts of the Case

Oki Data, owner of the trademark “OKIDATA,” manufactures printers and related equipment. ASD was an independent seller offering genuine Oki Data spare parts. ASD registered the domain okidataparts.com and sold authentic products, but it was not officially authorized by Oki Data.

Oki Data filed a complaint under the UDRP, claiming the domain caused confusion about affiliation. ASD argued that it sold only original products and was clear about being independent. The panel had to determine whether an unauthorized reseller can fairly use a trademark in a domain name.

Findings

The panel held that reseller use of a trademark can be fair if certain conditions are met, forming the Oki Data Test:

⦁ The reseller must sell only genuine products.

⦁ The website must clearly state that the reseller is not affiliated with the trademark owner.

⦁ The use of the trademark must not block the trademark owner from using it online.

⦁ The site should focus mainly on the trademarked products and avoid misleading consumers.

The panel found that ASD met most requirements but stressed that clarity and transparency were essential.

Suggestions

The decision encouraged:

⦁ Trademark owners to maintain clear reseller policies.

⦁ Resellers to avoid any impression of official endorsement.

⦁ Online use of trademarks to follow the principles of fairness and transparency to prevent disputes.

Judgment / Decision

The panel concluded that reseller use may be legitimate under the above conditions. The case became the foundation of the worldwide “Oki Data Test,” now used in thousands of trademark and domain disputes.