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must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith.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.