More room for resellers? The Oki Data and Lost Mary domain name disputes

In the recent Lost Mary UDRP case, the Czech Arbitration Court ventured a reinterpretation of the long-established Oki Data criteria. Koen de Winder recaps the basic principles of UDRP domain name disputes and the Oki Data criteria, and explores the possible implications of this latest decision. 

The Uniform Domain Name Dispute Resolution Policy (UDRP) allows rights holders to challenge domain name registrations that infringe their trademark rights. The UDRP procedure is available for generic domain names (such as .com, .shop) and several country-code top-level domains.  

For a successful appeal, a UDRP complaint must meet the following requirements:   

• The domain name is identical or confusingly similar to a trademark in which the complainant has rights.  
• The registrant has no legitimate rights or interest in the domain name.  
• The domain name has been registered and is being used in bad faith.  

The Oki Data criteria 

The Oki Data criteria stem from the well-known WIPO case Oki Data Americas, Inc. v. ASD, Inc. (2001). These criteria provide conditions under which resellers of a trademark can still claim a legitimate interest (the second criterion of the complaint) in domain names containing another person's trademark. A reseller has a legitimate interest if:  

• The reseller offers authentic (not counterfeit) products of that brand.  
• The site is used exclusively for those brand products (no other brand products are sold).  
• The relationship with the brand owner is accurately described (usually via a disclaimer on the website or upon purchase).  
• The reseller does not register all possible variants of the domain name, so that the brand owner also has the opportunity to sell its products.  

What happened in the Lost Mary case?  

The disputed domain lostmarydirect.com was registered in 2023. Since 2024, it has been used to sell authentic e-cigarette products of the Lost Mary brand. In the recent UDRP case, Lost Mary's trademark owners, Dashing Joys and Imiracle (Shenzhen) Technology, initiated a UDRP and requested the transfer of the domain name, arguing that there was a likelihood of confusion, the reseller had no legitimate interest, and was acting in bad faith. Shortly after filing the complaint, the domain name owner placed a disclaimer on its About Us page. Later, during the procedure, the disclaimer was prominently displayed on the homepage.   

The panel decision  

Despite the lack of a disclaimer during the UDRP complaint filing, the panel finds that the domain name owner has a legitimate interest. The third criterion of the Oki Data standard is expanded: a disclaimer is not necessary anymore, but the reseller's website must be clearly distinguishable from the trademark owner's website.   

The following factors play a role here:  

• Visual design (look & feel)  
• Clear pricing and presentation of products  
• Use of one's own logos, even if they contain the brand name of the brand owner  
• Style, layout and branding that differ from the official site   

In the specific case of lostmarydirect.com, the site was noticeably redesigned with bright colours, a distinctive look, and recognisable pricing information, making it clear to internet users that this was an independent reseller.  

The complaint was thus dismissed, and the domain name remains in the hands of the reseller.   

Possible implications of the Lost Mary case 

The decision appears to broaden the definition of "legitimate interest" for resellers, in line with a more visually oriented approach to online experiences and user expectations. This optimistic assumption about users' internet literacy could potentially lead to incorrect assumptions and thus significantly limit the scope of protection for trademark holders.   

These criteria, described as the “Lost Mary criteria” in reference to the case, can contribute to greater nuance but can also undermine the predictability of UDRP outcomes.   

The line from this ruling could be followed in new domain name disputes, which, on the one hand, increases flexibility, but on the other, could also lead to more variable practice. This could potentially undermine the legal certainty of both trademark owners and (legitimate) resellers.    

The new Lost Mary criteria add an important nuance to existing UDRP case law, namely that resellers offering authentic goods can demonstrate a legitimate interest if their website is visually and functionally clearly distinguishable from the trademark holder's. This allows for a broader interpretation of the legitimate interest criterion.   

If you're involved in a domain name dispute or would like to investigate possibilities for using a domain name within the framework of legitimate interest and other conditions, speak to your Novagraaf attorney or contact us below. For further insights on domain name disputes, download our whitepaper on domain name best practices.

Koen de Winder is a Senior IP Associate at Novagraaf in the Netherlands.