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Archive for the ‘WIPO’ Category

“Tata Massage” can keep its domain

Thursday, March 7th, 2013

In a recent domain name dispute over the domain, www.tatamassage.com, a single member Panel  denied a request to transfer. See Tata Sons Limited v. Tata Massage (WIPO Case No. D2012-2467 , March 4, 2013). Complainant Tata Sons Limited is a company established in 1917, with business activities from a predecessor dating back to 1868. The company includes approximately 100 major companies, 28 of which on are the stock exchange. Some of its companies include Tata Steel, Tata Motors, Tata Power, etc. Complainant owns many trade marks involving the words “TATA” in the U.S. and around the world. Complainant operates a domain at  www.TATA.com. The disputed domain was registered in 2011. Respondent provided a response and was represented internally.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2)  Respondent has no rights or legitimate interests in respect of the domain name; and (3)  the domain name has been registered and is being used in bad faith.

Regarding the first element, the Panel agreed that Complainant proved up rights to its marks. The Panel explained that “The disputed domain name is not identical to any of the Complainant’s trademarks as, even disregarding the “.com” extension, none of the Complainant’s trademarks include the alphabetical string “massage”. Even so, the disputed domain name is plainly confusingly similar to the Complainant’s trademarks.” Therefore, according to the Panel, the use of TATA in the domain was enough to satisfy ¶4(a)(i) of the Policy.

In addressing the second prong, the Panel noted “the Respondent claims that the massage services being promoted at the website to which the disputed domain name resolves are being provided by the wife of the individual disclosed in the WhoIs details for the disputed domain name and her nickname, or the name by which she is commonly known amongst her friends and family, is Tata.” To support this claim Respondent submitted exhibits showing reporters discussed visiting the services of Respondent and that the masseuse was introduced as Tata. The Panel also found it convincing that Respondent was operating a legitimate massage business, although explaining that a storefront is not required for the Policy.  Third, and hold the laughter please, the Panel found that the nature of massage services offered was different from anything covered by Complainant’s marks.  The decision provides no details, but simply states that the technique used is “face slapping.” Interestingly a review of the disputed domain explains the following “Face slapping is well known internationally and uses Thai wisdom to bring out your own beauty that is 100% chemical free. Most importantly nothing is forever and this is what you call natural beauty. Tata massage is unique beauty, and is a profession of true wisdom.”
Ultimately, the Panel found that Complainant was unable to satisfy ¶4(a)(ii) of the Policy. The Panel declined to review ¶4(a)(iii) of the Policy

As a result, the Panel DENIED Complaint’s request to transfer the disputed domain.

SPORT2000 Sleeps Too Long on its Rights

Monday, February 11th, 2013

In a recent domain name dispute over the domain, www.SPORT2000.com, a single member Panel  denied a request to transfer. See Sport 2000 Brand AG v. sport2000 (WIPO Case No. D2012-2449, January 28, 2013). Complainant Sport Brand AG owns many trade marks involving the words “Sport 2000” and since 1988, has used them in the sport retail industry. Sport Brand AG claims to have more than 3,500 retail outlets in 25 countries. Complainant operates a domain at  www.Sport2000International.com. The disputed domain was registered in 1998. Respondent provided a response and was represented pro se.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2)  Respondent has no rights or legitimate interests in respect of the domain name; and (3)  the domain name has been registered and is being used in bad faith.

Regarding the first element, the Panel provided a short yet instructive review of the facts.

The disputed domain name contains the word elements of the Complainant’s trade mark in their entirety. The difficulty for the Complainant in this case is that each of the trade mak registrations of which it provides evidence are for those word elements in a particular script or presentation and there is some question as to whether the Complainant has acquired trade mark rights in the combination of generic words “Sport 2000” itself. The only evidence that the Complainant offers of acquired rights in relation to that combination of generic words are: its use as part of a range of domain name registrations; and the size and extent of its business operations in which, presumably, the word combination is often used, at least verbally, without the design elements of the trade mark. Given the likely extent of that use of the word combination itself, the Panel finds, on balance, that the disputed domain name is identical or confusingly similar to the disputed domain name.

As a result, the Panel found that Complainant was able to satisfy ¶4(a)(i) of the Policy.

Complainant hit a road block on the second prong, wherein the Panel noted “This task is rendered more crucial in cases, such as the present one, in which the Complainant’s trade mark consists of a combination of generic words applied to the promotion of goods or services with which they are almost automatically associated.” The Panel acknolwedged that a using a website with generic links for a PPC (pay-per-click) means can be permissble. Further, the Panel found that Complainant presented insufficient evidence to rebut Respondents assertion that it could not have known about Complainant’s rights prior to registration. Another huge problem for Complainant was the length of time it waited to bring the action. Ultimately, the Panel found that Complainant was unable to satisfy ¶4(a)(ii) of the Policy.

As a result, the Panel DENIED Complaint’s request to transfer the disputed domain.

SHA Wellness Clinic Foolishly Attempts to use the UDRP

Friday, August 3rd, 2012

In a recent domain name dispute over the domain, www.sha.com, a three member Panel not only  denied a request to transfer but slammed the Complainant for improperly bringing the dispute in the first place. See Albir Hills Resort, S.A. v. Telepathy, Inc. WIPO Case No. D2012-0997, August 3, 2012). Complainant Albir Hills Resort, S.A. owns a few Community Trademarks and an International Trademark for the mark SHA relating to a host of different goods and services. Complainant owns the domains www.shawellnessclinic.es and www.shawellnessclinic.com.The disputed domain was registered on August 7, 1998. Respondent, Telepathy, Inc., owns over 3,000 three letter dot com domain names.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2)  Respondent has no rights or legitimate interests in respect of the domain name; and (3)  the domain name has been registered and is being used in bad faith.

In addressing the first element the Panel noted that Complaint had a valid trademark for SHA and that the domain name was identical under Policy paragraph 4(a)(i). Trhe crux of the case was focused on the remainder of the elements.

The Panel’s discussion of the second element began with a review of some relevant UDRP precedent.

It is also well established that a respondent may well have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, provided that the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words and not because of its value as a trademark and further provided that the website to which the domain name resolves is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words.

The Panel noted that the disputed domain was registered in 1998, which was many years prior to the existence of Complainant’s company and trademark rights. Further it noted there was no evidence that Respondent had any intention to target Complainant or its Mark. As a result, the Panel found that Respondent in fact had a right or legitimate interest in the domain.

Moving to the final element, the Panel continued with the factual analysis, again noting the disparity between Respondent’s domain registration and Complainant’s rights. Specifically, the Panel noted that  Complainant’s mark SHA was filed for in 2006 and the Complainant has not submitted evidence of prior use of its trademark. The Panel took it a step further though, noting that since it was a three letter domain, the result of multiple acronym uses for SHA yielded possibilities such as “Secure Hash Algorithm”, the “Saskatchewan Hockey Association” and the “Society for Historical Archaeology”. Ultimately, the Panel settled on the fact that there was no evidence to establish that Respondent tried to generate confusion with Complainant’s mark and found this factor favored Respondent.

The Panel was not finished yet, since it then turned its attention to the Reverse Domain Name Hijacking claim.

In the case at hand, the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent, which owns over 1000 three-letter-domains in its domain name portfolio. The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA. Moreover, the Complainant’s representative has misconceived the nature and the purpose of the Policy according to which the Complaint was brought.

The Panel found Complainant’s assertion of 15 years of market presence to be misleading since the evidence instead pointed to the fact that Complainant opened in 2008 and the mark SHA was not even filed until 2006.

As a result, the Panel DENIED Complaint’s request to get the disputed domain. The Panel additionally found that Complainant engaged in reverse domain name hijacking.

P90X Guarantees Results…Just Not These Kind of Results

Thursday, May 5th, 2011

In the recent domain name dispute of Beachbody, LLC v. Gregg Gillies (WIPO Case No. D2011-0358, April 21, 2011) a single member panel was faced with a dispute over the domain www.p90xworkoutschedule.com. The disputed domain was registered on June 11, 2009 and Respondent provided a brief response which included the following statement:

There is no confusion or misrepresentation on the site as to whether it’s the original p90x site or owned by Beach Body, LLC. It clearly gives a review of the product (p90x), which I own, and in fact, even gives a positive review, so I clearly not trying to harm Beach Body or alter sales of p90x in a negative way. I use the site to share my experiences with p90x and to specifically talk about its workout schedule. I don’t pretend to be an official site, nor do I try and confuse anyone about that fact.

Complainant owns multiple trademark registrations in the U.S. and internationally related to its P90X mark. Complainant maintains a website at www.beachbody.com and also owns the domain www.p90x.com, which is forward to its main site.

Paragraph 4(a) of the UDRP ICANN Policy requires that the Complainant must prove each of the following three elements to obtain an order that Disputed Domain Name should be cancelled or transferred. (i) The Disputed Domain Name is identical or is confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) The Disputed Domain Name has been registered and is being used in bad faith.

In addressing the first element the Panel noted that the “addition of a generic or highly descriptive term does not serve to distinguish between the mark of the complainant and the disputed domain name.” The Panel ultimately found that the domain was confusingly similar to Complainant’s mark. In addressing the second element, the Panel explained that Respondent’s name has no correlation to the disputed domain and there is no evidence of authorization or a license. However, the Panel refrained from making its decision on this prong, noting that the third prong would address concerns of the case.

The third prong, registration and use in bad faith, resulted in the most detailed analysis for this Panel. The Panel made the following observation about Complainant’s pleadings:

The heart of the Complainant’s claim in these proceedings is that, under paragraph 4(b)(iv) of the Policy, the Respondent is using the Disputed Domain Name to draw people to its site for the purpose of the promoting the e-book “Truth About Six Pack Abs.” However, the Complainant has not provided any explicit evidentiary support for this claim, other than to refer generally to Respondent’s website accessible through the Disputed Domain Name. The Complaint does not set out where on the website the Respondent has been promoting the e-book “Truth About Six Pack Abs.” Review by the Panel of the exhibits and other materials provided by the Complainant in the Complaint did not disclose any explicit reference to the promotion and sale of the e-book “Truth About Six Pack Abs.”

As a result, the Panel issued an Administrative Procedural Order seeking additional evidence and information, to which Complainant simply restated its prior allegations and failed to provide additional evidence. The Panel also noted that Respondent provided a disclaimer on the disputed domain as the lack of affiliation. In light of that disclaimer the Panel explained:

However, when there is a disclaimer on the Respondent’s website where there is a colorable argument of legitimate use, and the Complainant has provided no convincing evidence to support its claim of bad faith by the Respondent, such a disclaimer may serve to buttress Respondent’s claim that it has not acted in bad faith. The Panel finds that is the situation here. The Panel further takes note of a number of “Ads by Google” apparently present on the website, amidst Respondent’s described work-out schedule. However, even if these might in some way be indicative of use by the Respondent in bad faith, the Complainant has made no contention or submission whatsoever on this issue. As such, based on the record of the Complaint, the Panel does not find it sufficient to carry the balance in the Complainant’s favor.

Ultimately, the Panel found that Complainant failed to satisfy all three prongs and DENIED the request for transfer.

WIPO Releases 2010 Domain Dispute Statistics Report

Thursday, March 31st, 2011

WIPO released its 2010 statistics for domain name disputes. The numbers have increased from the year prior, with a record breaking 2,696 cybersquatting cases covering 4,370 domain names. That equals a 28% increase from the previous year. The report noted that the top five areas of activity were in retail, banking and finance, biotechnology and pharmaceuticals, Internet and IT, and fashion. Additionally, 82% of the disputes involved a “.com” domain name.  For a full copy of the report please click here.

Grab Your Popcorn…Cinema Drama Unfolds

Monday, February 14th, 2011

In the recent domain name dispute of Prime Pictures LLC v. DigiMedia.com L.P. (WIPO Case No. D2010-1877, February 2, 2011) a three member panel was faced with a dispute over the domain www.cinemacity.com. Complainant uses the mark CINEMACITY throughout Lebanon, UAE, Jordan and Syria for movie theaters. Complainant claims rights to a Lebanese registered trademark from 2006. However, as there is some dispute over the facts presented by Complainant , in that there appears to be multiple companies that are related as presented by Complainant. The Panel noted that Complainant failed to adequately identify how these companies are related. Respondent registered the disputed domain on September 24, 1998 and has used the website as a parked page since that time.

 In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel noted that there are serious questions regarding the first element. As noted above, there were multiple companies referred to in Complainants filing. As a result, the Panel explained “More seriously there is no evidence at all that any of these companies is connected with the Complainant, Prime Pictures LLC, or that Prime Pictures LLC has any right in this mark on any other basis.” The Panel chose not to seek additional proof or information from Complainant in light of its findings under the other prongs.

The Panel then reviewed the second element, and found that Respondent did not have any rights or legitimate interests in the domain. However, as many of you know, all three of the elements must be found in favor of the Complainant. In moving onto the third element, the Panel made the following findings:

In this case the Complaint contains no evidence of any use of “Cinema City” as a mark or company name prior to September 2005. The Domain Name was registered by the Respondent in September 1998. There is no evidence whatsoever that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.

Normally the Panels stop their analysis at this point, making findings for Respondent. However, in this case the Respondent claimed Reverse Domain Name Hijacking. Panels have ben very reluctant to make such a finding. This Panel made the following findings:

In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint….the Panel considers it unlikely that this deficiency was overlooked by the Complainant’s counsel and more probable that it was deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.

Ultimately, the Panel DENIED the request for transfer and made a finding that Complainant engaged in Reverse Domain Name Hijacking.

Domain Dispute With 5 Complainants and 25 Domains DENIED on Procedural Grounds

Wednesday, January 5th, 2011

In the recent cybersquatting case of Grupo Bimbo S.A.B. de C.V., Bimbo Hungria ZRT., Arnold Products, Inc., Orograin Bakeries Products, Inc., Bimbo Bakeries USA, Inc. v. John Paulsen (WIPO Case No. D2010-1647, December 3, 2010) a single member Panel was faced with an interesting dispute brought by five (5) different Complainants seeking the transfer of 25 domains.

The domains at issues included <aboutgrupobimbo.com>, <arnoldfillems.com>, <bagelthin.com>, <bagelthins.com>, <bimbobrands.com>, <bimbobreads.com>, <bobolipizza.com>, <bobolipizzacrust.com>, <bobolisauce.com>, <brownberrybreads.com>, <brownberryjr.com>, <coronadocandy.com>, <entenmannscakes.com>, <entenmannscookies.com>, <entenmannsdonuts.com>, <fillems.com>, <franciscobreads.com>, <freihofersbread.com>, <laracookies.com>, <oldcountrybreads.com>, <oroweatbread.com>, <sandwichthin.com>, <stroehmannbread.com>, <tiarosatortilla.com> and <tiarosatortillas.com>.

The Panel explained that Grupo Bimbo is a large and internationally known baking company. and that the other Complainants appeared to be subsidiaries. Each of the Complainants individually owned trademark registrations and rights in one or more trademarks. The marks being claimed included GRUPO BIMBO, BIMBO, TIA ROSA, CORONADO, LARA, SANDWICH THINS, BROWNBERRY, FILL `EMS, BOBOLI, ENTENMANN’S, FREIHOFER’S, STROEHMANN, FRANCISCO, OLD COUNTRY, and OROWEAT.

Respondent filed a response which did not address the merits of the case, but the Panel explained that Respondent instead asserts that the process provided for under the UDRP is corrupt and inherently unfair in that “it favors the haves and unfairly penalizes and punishes the have nots”. The Respondent states that he does not recognize “the authority of WIPO or any other would be ‘World Policing Organization’”, and that he is certain his domain names “will be stolen” by the Complainants and their attorneys.

The remainder of the decision focused on the singular procedural issue of whether or not multiple complainants in this case was appropriate. The Panel explained:

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. This Panel, along with a number of WIPO Panels, nonetheless has concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy.

The Panel recognized that prior Panels have allowed consolidation and that a “test” has been created for the determination of whether it is appropriate. The factors to be analyzed for consolidation are as follows:

(1) Number of complainants; (2) Number of domain names; (3) Voluminous filings; (4) Novel, difficult or largely untested issues; and (5) Potential for different outcomes for domain name disputes depending on nature of rights asserted.

The Panel reviewed these factors and found that there were too many overriding procedural issues to efficiently decide the case on its merits. For instance the Panel explained:

As a result, there appear to be different issues to be addressed under the first element of the Policy involving the disputed domain names <bagelthins.com> and <bagelthin.com> arising from the differing nature of the rights asserted by the Complainants in BAGEL THINS. In addition the descriptiveness question referred to above may also create the potential for different outcomes with respect to these disputed domain names under the second or third elements of the Policy. And, as noted earlier, <bagelthins.com> initially was used by the Respondent in a way that it appears the other disputed domain names have not been used. For all of the foregoing reasons, the Panel after careful consideration is not persuaded that the Complainants have made a sufficient showing to permit consolidation of the multiple complainants involved here. The Panel is concerned among other things that a multiplicity of issues could render the summary and expedited dispute resolution process envisioned by the Policy inefficient or ineffective, or even raise issues concerning fairness and equity.

Ultimately the Panel DENIED the request for transfer, but did so without prejudice, permitting the Complainants to re-file individually.

A Fight Over Wood Means Lots Of Splinters

Thursday, December 16th, 2010

In the recent cybersquatting dispute of Greenply Industries Limited v. Matthew Poston WIPO Case No. D2010-1748, November 29, 2010, single member panel was face with a dispute over the domain www.greenply.net. Complainant is a supplier of plywood and laminate to the Indian market and has multiple Indian trademark registrations.  Complainant also maintains a website at www.greenply.com. Respondent registered the disputed domain in October 2008 and filed a Response to the dispute. Respondent filed for a U.S. trademark registration for the mark GREENPLY in February 2008, and it was published for opposition in July 2008. Respondent argued that since the USPTO had moved the application to publication, he believed that the registration of the domain was not in bad faith.

According to paragraph 4(a) of the ICANN UDRP Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith.

The Panel quickly addressed the first element, noting that the domain was identical to Complainant’s mark. The case turned on the second prong. The Panel noted that Complainant failed to present evidence demonstrating business in the U.S. prior to the Respondent’s registration of the domain. Additionally the Panel notes there was nothing in the record to indicate that Respondent’s intention to target Complainant’s brand. The Panel further rejected any contention that there has been confusion based upon a lack of evidence presented.

The Panel did not address the third prong in light of finding that Respondent established rights or legitimate interests in the domain. Ultimately the Panel DENIED the request for transfer.

3D Glasses Not Needed In UDRP Loss

Monday, December 6th, 2010

In the recent UDRP case of X6D Limited v. Telepathy, Inc. (WIPO Case No. D2010-1519, November 16, 2010) a three member Panel was faced with a dispute over the domain www.xpand.com. Complainant is a supplier of 3D solutions for movie theaters and home use and maintains a website at www.xpandcinema.com. Complainant owns a trademark registration for the mark XPAND BEYOND CINEMA and has pending applications for the single word mark XPAND. The disputed domain was registered on June 25, 2003, which was 3 years prior to the alleged date of first use of the marks by Complainant.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Panel found that Complainant established the first prong, since the essence of the registred mark was incorporated into the domain. In addressing the second prong the Panel noted that Respondent alleged the domain was generic or at least descriptive. The Panel found that the word “xpand” was descriptive as a short hand for the word “expand.” The Panel recognized the commercial value of descriptive words, which when such domains are offered for sale can be considered a bona fide offering of goods or services.

The case ultimately seemed to weigh heavily on the third prong, wherein the Panel explained:

The Respondent acquired the disputed domain name in 2003. The Complainant did not use the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name. The Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name.

After making a finding that Complainant failed to prove all three elements, the Panel moved its attention to Respondent’s request for a finding of Reverse Domain Name Hijacking. The Panel explained:

In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.

Ultimately the Panel DENIED the request for Transfer.

RED BULL’s Wings Failed Them This Time

Friday, October 15th, 2010

 

In the recent domain name dispute of Red Bull GmbH v. Roy Kenneth Nabben (WIPO Case No. D2010-1358, September 30, 2010) a single member Panel was faced with a dispute over the domain www.redbullnorge.com. RED BULL is the well known energy drink which does not need much of in introduction. RED BULL maintains a website at www.redbull.com. Respondent filed a response noting that the domain was registered in order for Respondent to sell Red Bull to residents of Norway. “Norge” means Normway, thus the domain name was aptly chosen in light of the proposed usage. The decision explained that the sale of the drink in Norway was not legal, and the parties would work toward getting the product legalized for sale in Norway. The decision notes that the relationship between the parties was done by agreement, and that RED BULL knew and approved of Respondents registration and use of the domain.

In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel quickly found that the first prong of confusingly similar was met. Then the Panel also quickly dispensed of the second prong, noting that under 4(a)(ii) of the UDRP the registrant can satisfy this prong by showing that it once had such rights but no longer retains a right to use the disputed domain name.

The crux of the case came down to the third element, bad faith registration and use. The Panel explained:

[T]he 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…But where a company consents to the registration by a trading partner of a domain name incorporating its mark, the company can readily protect itself by securing a clear written agreement specifying that it will own the domain name after the trading relationship comes to an end; and the agreement can further specify a cost effective means of dispute resolution. At all events this situation is a long way from the mischief which the UDRP was devised and adopted to address, namely the abusive registration of domain names which are identical or confusingly similar to the marks of other parties without their consent. In any case, the Panel is obliged to apply the UDRP as it is, rather than as it could or should be.

Ultimately the Panel found that RED BULL failed to satisfy all three elements and DENIED the request for transfer.

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