UDRP not suitable to obtain domain name originally registered with your consent

An interesting decision was recently decided by the WIPO Arbitration and Mediation Center under the UDRP concerning the domain name 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 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must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith.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 There is no evidence that the registration was originally made by the Respondent in bad faith.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.

Case No. D2010-1358 of 30 September 2010.

Posted by: Mark Schweizer @ 10.41
Tags: UDRP, WIPO, domain name,

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