An interesting decision was recently decided by the WIPO Arbitration and Mediation Center under the UDRP concerning the domain name redbullnorge.com. Red Bull GmbH of Fuschl am See, Austria, proprietor of the famous Red Bull trade marks for energy drinks, had back in 2006 allowed Roy Kenneth Nabben to register and use the domain name redbullnorge.com for sale of the Red Bull energy drink in Norway until Red Bull GmbH received authorization from the Norwegian
authorities to sell the product legally in Norway, which it did in April
2009. Red Bull GmbH then required transfer of the domain name under the UDRP and failed to obtain it. The panelist held that:
For the reasons set out in detail in the recent majority decision in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,
WIPO Case No. D2010-0800,
the Panel considers that, to satisfy the third requirement of the UDRP,
a complainant must show that the domain name was both registered in bad
faith and is being used in bad faith, and that a registration
originally made in good faith cannot turn into a registration in bad
faith because the registrant subsequently uses it in bad faith. Bad
faith use can be evidence of bad faith registration but cannot convert a
registration which was in fact made in good faith into a registration
made in bad faith.
It has also been the consensus view of panelists that a renewal of a
domain name without a change of ownership does not constitute a new
registration for the purpose of this requirement (references omitted).
In this case it is common ground that the Domain Name was originally
registered by the Respondent with the consent of the Complainant to
enable the Respondent to market the Complainant’s Red Bull product to
consumers in Norway for the mutual benefit of both parties. There is no
evidence that the registration was originally made by the Respondent in
bad faith. The Respondent has remained the registrant of the Domain Name
since then, albeit that he renewed the Domain Name after the
Complainant demanded that he cease using it.
In these circumstances, the Panel cannot find that the Domain Name
was registered in bad faith. The third requirement of the UDRP is not
satisfied and the Complaint must be rejected.