The complainant has rights in Lost Mary for disposable vapes which were launched in the UK in April 2022. As well as trade mark registrations, the complainant had made extensive use of Lost Mary over the past few years and their official videos on YouTube attracted millions of views. The official Lost Mary website had approximately 94,600 visits in November 2023 (when the disputed domain name was registered) with visitors coming from a range of countries including the UK, USA and France. The domain name registrant was a reseller of genuine Lost Mary products. On this basis, they claimed they had a legitimate interest in the domain name registration and amended their website to include a disclaimer to make it clear that they were not affiliated with the complainant.

As the first step with any UDRP complaint, the complainant needed to prove they had rights in a trade mark that was identical or confusingly similar to the domain name, which was readily satisfied.

The next step in the UDRP complaint was to show that the registrant had no rights or legitimate interest in the domain name. The Registrant did not hold trade mark registrations for Lost Mary, and the panel therefore considered if there was a legitimate interest, deciding to update the approach taken when dealing with authorised resellers and the existing Oki Data criteria, from a 2001 decision (WIPO D2001-0903). The panel noted that the internet has moved on significantly since 2001 and created revised “Lost Mary criteria” as follows:

1. There is actual offering of goods and services via respondent’s website at issue;
2. The use of the website is to sell only the specific trademarked goods which have been brought into the market by the trade mark owner and;
3. The respondent’s website can be easily distinguished from that of the trademark owner. Aspects that can be decisive to distinguish respondent’s website from that of the trade mark owner are inter alia (but not limited): (a) the placing of a disclaimer disclosing respondent’s relationship with the trade mark owner on the home page of the website; (b) the creation of a different look and feel of the website of Respondent as compared to the website of the trade mark owner; (c) the dominant use of resellers’ websites specific elements like pricing and depiction of the goods; (d) the use of a logo on the top of the home page, not including the trademark as mentioned in the disputed domain name, that addresses the entity of respondent on the website.
4. The respondent must also not try to corner the market in domain names that reflect the trade mark.

The panel made it clear that it regarded compliance with a particular requirement as mandatory; there must be a distinction between the reseller’s website and the trade mark owner’s website. In the present case, the panel found that the public would be able to distinguish between the two websites immediately due to different appearances, including the colours used and messages conveyed. Considering that it found the respondent had done what was necessary to distinguish their website from that of the complainant, and that the use of Lost Mary was in relation to the resale of genuine product, this requirement had been met. Therefore, the panel found that the respondent did have a legitimate interest in respect of the disputed domain name, and it followed that there was no bad faith. The complainant had mentioned that the respondent held other domain names and websites that referred to third party trade marks for vaping products but as these were not with respect to the Lost Mary brand, they were deemed to be irrelevant. Perhaps a different outcome would be found if such domain names were not used to resell genuine products.

The panel did mention that UDRP is not a suitable vehicle for all disputes involving domain names. If a trade mark owner wants to prevent use of their trade mark by a reseller or control how their trade mark appears online, they should look to do o through agreements with authorised dealers and tighter networks, making use of appropriate contractual language.

The decision serves a reminder that UDRP proceedings do not deal with trade mark infringement, and there may be use that is permitted under UDRP that would not be permitted in trade mark infringement proceedings. In this case, the panel noted that Lost Mary appeared in the respondent’s logo. The possible issue of trade mark infringement in this case was beyond the scope of a UDRP complaint and would need to be dealt with separately. Therefore, it remains possible that the lostmarydirect.com dispute could be reactivated in a different forum.

Case details at a glance

Case number: CAC-UDRP-107605
Time of filing: 2025-06-03 09:27:44
Domain names: lostmarydirect.com
Decision: dycip.com/udrp-lost-mary