[The IPKat] [Guest post] Was Mary lost in cyberspace? A domain name decision that aims to redefine the Oki Data criteria

[Eleonora Rosati]

[Guest post] Was Mary lost in cyberspace? A domain name decision that aims to redefine the Oki Data criteria

 Eleonora Rosati Wednesday, August 06, 2025 - domain names, Guest post, Lost Mary, Oki Data Criteria, trade marks, UDRP, Uniform Domain Name Dispute Resolution Policy, Willem Leppink

The IPKat has received and is pleased to host the following guest contribution by Katfriend Willem Leppink (Ploum) concerning the recent decision of the Czech Arbitration Court in Dashing Joys Limited, Imiracle (Shenzhen) Technology Co., Ltd v. Mohammad Zafar, CAC Case No. CAC-UDRP-107605. Here’s what Willem writes:

Was Mary lost in cyberspace? A domain name decision that aims to redefine the Oki Data criteria

by Willem Leppink

In a recent decision of the Czech Arbitration Court in a Uniform Domain Name Dispute Resolution Policy (UDRP) dispute, panellist Marieke Westgeest introduced a bold reinterpretation of the well-established Oki Data criteria, proposing what she calls the “Lost Mary criteria”. The case concerned the domain name <lostmarydirect.com>, registered by Mohammad Zafar, a reseller of LOST MARY e-cigarettes. The complainants, Dashing Joys Limited and Imiracle (Shenzhen) Technology Co., Ltd, failed to prove that Zafar lacked a legitimate interest in the domain name, resulting in the complaint being dismissed.

Facts

The complainants, based in Hong Kong and Shenzhen, own trade marks for LOST MARY, under which they sell e-cigarettes in the UK. Zafar registered <lostmarydirect.com> in November 2023 and used it to resell genuine LOST MARY products sourced from official distributors. Notably, the complainants do not sell directly to consumers. Initially, Zafar’s website included a disclaimer on the “About Us” page only. After the complaint was filed, a more prominent disclaimer was however added to the homepage:

The UDRP and Oki Data criteria

The UDRP allows trade mark holders to challenge, in alternative dispute resolution (ADR) proceedings, domain names that are identical or confusingly similar to their marks, where the registrant lacks rights or legitimate interests, and has registered and used the domain in bad faith.

The Oki Data criteria, established in 2001, have guided domain name panellists in assessing fair use by resellers. These include:

1. actually offering (genuine) goods,
2. using the site exclusively for those goods,
3. clearly stating the relationship with the trade mark owner (typically through a disclaimer), and
4. not taking all available domain names.

The Oki Data criteria have been incorporated in inter alia section 2.6 of the WIPO Overview 3.0. This jurisprudential overview, prepared by WIPO on the basis of earlier decisions, provides answers to the most important legal questions in relation to the UDRP. It is common practice among panellists in UDRP decisions, to refer directly to this overview rather than to specific cases.

The Panellist’s amendment

In the <lostmarydirect.com> case, the panellist broadened the third Oki Data criterion. Instead of requiring a disclaimer alone, she suggested that a reseller’s website must be “easily distinguishable” from the trade mark owner’s site. Factors include:

• A disclaimer
• A different look & feel
• Prominent pricing and product presentation
• Use of a unique reseller logo

She argued that internet users today are savvier and more capable of distinguishing reseller sites from official ones, also referring to decisions in Google AdWords.

Application to the case

The panellist found that Zafar’s site was sufficiently distinct from the complainant’s—featuring a garish logo, bold pricing, and the way the products were presented. While the reseller logo included “LOST MARY,” which could raise trade mark concerns, this fell outside the scope of the UDRP. Ultimately, she concluded that Zafar had a legitimate interest and rejected the complaint.

Analysis

While innovation in UDRP interpretation is welcome, the panellist’s proposal to redefine the Oki Data criteria is unnecessary. The Oki Data criteria, as well as the WIPO Overview 3.0 are anyway not binding, as the introductory paragraph of the WIPO Overview 3.0 sets out. The criteria are a tool, not a rulebook. Panellists already have discretion to assess fair use holistically, taking a broader perspective on what fair use is.

As explained, the panellist in <lostmarydirect.com> proposed amending the third Oki Data criterion, suggesting that a reseller’s website must be “easily distinguishable” from the trade mark owner’s website. This includes visual differences, pricing emphasis, and use of a unique reseller logo. But this shift risks creating confusion. Internet users often don’t know what the official site looks like, especially in an era of slick AI-generated websites. The idea that users are now “internet-savvy” enough to spot unofficial sites is too optimistic.

Although unrelated to trade marks, misleading websites where Electronic Travel Authorizations (ETA) can be obtained for traveling to the United Kingdom, charging ridiculous fees, show for example how easily users can be deceived—even when the fake sites don’t resemble official ones. It is also unrealistic to expect users to compare reseller sites to official ones.

Moreover, the domain name itself matters. A name like <lostmarydirect.com> may imply an official sales channel, especially when the site uses the trade mark in its logo and as the name mentioned in the copyright notice. Such domain names consisting of the trade mark plus a descriptive term could suggest affiliation with the trade mark owner: see WIPO Overview 3.0, under 2.5.1. Zak Muscovitch, involved in the WIPO-ICA UDRP Review Project Team, also pointed this out.

Conclusion

The <lostmarydirect.com> decision is thought-provoking and may influence future panellists. However, a formal shift from the Oki Data to the Lost Mary criteria risks undermining the consistency and predictability that make the UDRP effective. Panellists already have the tools to assess fair use without rewriting the rules anew.

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